VM Vermögens-Management GmbH v European Union Intellectual Property Office (T-374/15)

Contents

Judgment of the General Court (Sixth Chamber)7 September 2017^note(EU trade mark — Invalidity proceedings — EU word mark Vermögensmanufaktur — Absolute grounds for refusal — Descriptive character — No distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Article 52(1)(a) of Regulation No 207/2009)In Case T‑374/15,VM Vermögens-Management GmbH, established in Düsseldorf (Germany), represented by T. Dolde and P. Homann, lawyers,vEuropean Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,DAT Vermögensmanagement GmbH, established in Baldham (Germany), represented by H.-G. Stache, lawyer,THE GENERAL COURT (Sixth Chamber),composed of G. Berardis, President, S. Papasavvas and O. Spineanu-Matei (Rapporteur), Judges,Registrar: M. Marescaux, Administrator,having regard to the application lodged at the Court Registry on 9 July 2015,having regard to the response of EUIPO lodged at the Court Registry on 21 September 2015,having regard to the response of the intervener lodged at the Court Registry on 30 September 2015,having regard to the change in the composition of the Chambers of the General Court,having regard to the reassignment of the case to the Sixth Chamber and to a new Judge-Rapporteur,having regard to the letter of EUIPO of 15 November 2016, placed on the case file by decision of 28 November 2016, and the observations of the applicant and the intervener on that letter lodged at the Court Registry, respectively, on 13 and 12 December 2016,further to the hearing on 8 March 2017, in which the intervener did not participate,gives the following

JudgmentOnly the paragraphs of this judgment which the Court considers it appropriate to publish are reproduced here.

I. Background to the dispute

1On 18 December 2009, the applicant, VM Vermögens-Management GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2The trade mark in respect of which registration was sought is the word sign Vermögensmanufaktur.

3The services in respect of which registration was sought are in Classes 35 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:– Class 35: ‘advertising; business management services; business administration; office functions’;– Class 36: ‘insurance; financial affairs; monetary affairs; asset management, financial consultancy; real estate affairs.’

4On 8 February 2011, the EU trade mark application was published in Community Trade Marks Bulletin No 26/2011. On 18 May 2011, the mark in question was registered under Number 8770042.

5On 30 July 2012, the intervener, DAT Vermögensmanagement GmbH, filed an application with EUIPO for a declaration that the contested mark was invalid in respect of all of the services for which it had been registered. In support of its application, the intervener submitted Annexes 1 to 6, referred to in paragraph 3 of the decision of 29 April 2015 (‘the contested decision’), by which the fifth Board of Appeal of EUIPO granted its application.

6The ground for invalidity relied upon in support of that application was that referred to in Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of that Regulation.

7On 15 January 2013, the applicant submitted observations dated 9 January 2013 and contended that the application for a declaration of invalidity should be rejected in its entirety. In that regard, it submitted Annexes 1 to 17, referred to in paragraph 5 of the contested decision.

8On 7 June 2013, the intervener submitted its observations on the applicant’s observations of 15 January 2013 (‘the observations of 7 June 2013’) and submitted Annexes 7 to 25, referred to in paragraph 3 of the contested decision. It also requested an extension of the time limit in order to adduce additional evidence from the Deutsches Patent- und Markenamt (German Patent and Trade Marks Office) that it had sought permission to consult but had not yet received.[omissis]

10On 23 August 2013, the intervener submitted further observations (‘the observations of 23 August 2013’), to which Annexes 26 to 30, referred to in paragraph 3 of the contested decision, were attached. The Cancellation Division incorrectly classified the intervener’s observations as the applicant’s observations and notified them as such to the intervener on 2 September 2013. It also informed the two parties that the adversarial part of the proceedings was closed. On the same day, having realised its error, the Cancellation Division annulled its earlier communication of that day in respect of the applicant.

11On 14 October 2013, EUIPO notified the applicant that the request for an extension submitted by the intervener on 7 June 2013 had been denied, on the ground that the intervener had not stated the reasons for its request, and that the observations of 23 August 2013 would not be taken into account. EUIPO informed the applicant that a copy of the intervener’s letter of 23 August 2013 would be sent to it for information purposes only.[omissis]

14On 10 December 2013, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. In essence, it based its decision, inter alia, on the fact that it was not possible for the German word ‘Manufaktur’ to have a concrete meaning in so far as concerns the services covered, on account of their intangible nature. Consequently, in its view, the combination of the German word ‘Vermögen’ and the German word ‘Manufaktur’ had, on the date on which the application for registration of the contested mark was filed (‘the relevant date’), a distinctive character and was not descriptive of services.

15On 5 February 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division. On 10 April 2014, it submitted a written statement setting out the grounds of appeal and produced the documents referred to in paragraph 8 of the contested decision. On 25 June 2014, the applicant submitted observations and produced the documents referred to in paragraph 9 of the contested decision.

16By the contested decision, the Fifth Board of Appeal of EUIPO upheld the intervener’s appeal. First, it considered that the documents submitted to it by the applicant and the intervener were merely items of evidence supplementing and reinforcing that which had already been submitted and that, therefore, it exercised its discretion to admit them. Secondly, it held that the contested mark was descriptive and devoid of distinctive character. Accordingly, it annulled the Cancellation Division’s decision and declared the contested mark invalid.[omissis]

III. Forms of order sought

18The applicant claims that the Court should:– annul the contested decision;– order EUIPO to pay the costs.[omissis]

20EUIPO contends that the Court should:– dismiss the action;– order the applicant to pay the costs.

21The intervener did not formally submit any claims in its response.

IV. Law

A. The claims seeking annulment of the contested decision[omissis]

1. The third plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

24The applicant argues, in essence, that the Board of Appeal erred in finding that the contested mark was, for the purposes of Article 7(1)(c) of Regulation No 207/2009, descriptive of the services covered. It alleges, first, an incorrect definition of the relevant public and, secondly, an incorrect assessment of the perception of the contested mark, both as regards the global assessment and the assessment of the mark’s individual components.

25EUIPO and the intervener dispute the applicant’s arguments.[omissis]

(b)The perception of the contested mark[omissis]

(2)The meaning of the German word Manufaktur

40The Board of Appeal stated, in essence, in paragraph 25 of the contested decision, referring to the online version of the German dictionary Duden — although, due to an obvious typing error, it did not reproduce the word ‘high’ — that the German word ‘Manufaktur’ comes from the words ‘manus’ (hand) and ‘facere’ (to do, make) and designates ‘a small industrial or commercial undertaking in which highly specialised goods are wholly or partly made by hand, which results in goods of high quality’.

41Although it is common ground that the German word ‘Manufaktur’ means a place in which goods are made, the applicant disputes that that word, on the relevant date, also (i) designated an undertaking providing services and (ii) referred to individualised, high-quality services.

42In the first place, as regards the use of the German word ‘Manufaktur’ with regard to services, the Board of Appeal considered, in paragraph 27 of the contested decision, that the intervener had provided satisfactory evidence of the possibility of such use on the relevant date, for financial services in particular. It accordingly referred to the German word combinations ‘Finanzmanufaktur’ and ‘Kreditmanufaktur’ (respectively ‘the combination “Finanzmanufaktur”’ and ‘the combination “Kreditmanufaktur”’).

43It should be noted that the intervener adduced, as an annex to the observations of 7 June 2013, various pieces of evidence, listed in paragraph 3 of the contested decision, showing that, on the relevant date, the German word ‘Manufaktur’ was used in connection with services, financial services in particular. Accordingly, the intervener submitted Annexes 10, 11 and 18 to 21, which show that the combination ‘Finanzmanufaktur’ and the combination ‘Kreditmanufaktur’ were in use long before that date.

44The applicant nonetheless argues that it should be taken into consideration that the relevant public is the general public, whereas Annexes 10, 11 and 20 to the observations of 7 June 2013 are from the specialist financial press and Annexes 18 and 19 are taken from specialist literature translated from English into German. In that regard, it should be noted that the fact that the German word ‘Manufaktur’ appears in the specialist press does not mean that the relevant public will not be able to perceive the link between that word and services. Indeed, bearing in mind the services covered, in Classes 35 and 36, the relevant public, even if composed in part of the general public (see paragraphs 36 and 37 above), may read the specialist press, in particular the financial press. On the other hand, it is in no way apparent from Annexes 18 and 19 to the observations of 7 June 2013 that those documents are translations. In any event, in those documents, which are written in German, the word ‘Manufaktur’ is used in connection with services.

45Furthermore, the applicant’s argument that the combination ‘Finanzmanufaktur’ was used in Annexes 11 and 17 to the observations of 7 June 2013 in quotation marks or as the name of an undertaking, so that it was not possible to establish its descriptive character, is irrelevant. The question, in fact, is whether, on the relevant date, the German word ‘Manufaktur’ could be used in relation to services. It is clear from those Annexes that this was the case, and, what is more, in respect of financial services. For the same reason, the argument that the German word combination ‘Vermögensmanufaktur’ (‘the combination “Vermögensmanufaktur”’) does not appear in the examples cited and the argument that the meaning of the German words ‘Finanz’ and ‘Kredit’ used in conjunction with the German word ‘Manufaktur’ is more concrete than that of the German word ‘Vermögen’ used with that word are irrelevant.

46Therefore, it must be held that the Board of Appeal was fully entitled to consider, in paragraph 27 of the contested decision, that, on the relevant date, the German word ‘Manufaktur’ could be associated with services.

47Secondly, as regards the use of the German word ‘Manufaktur’ as relating to individualised, high-quality services, the Board of Appeal considered, in paragraph 27 of the contested decision, that the intervener had provided satisfactory evidence of the existence of such a use on the relevant date.

48However, the applicant considers that it has not been proved that the German word ‘Manufaktur’ equates to a promise that goods are individualised or of high quality. That argument must nonetheless be rejected.

49Indeed, first, as regards the reference to high quality, in paragraph 25 of the contested decision, the Board of Appeal explained, referring to the online version of the German dictionary Duden, that the German word ‘Manufaktur’ refers to ‘a small undertaking in which highly specialised goods are wholly or partly made by hand, which results in goods of high quality’ (see paragraph 40 above). The applicant does not call that dictionary definition into question. Although the Board of Appeal did not specify that it existed on the relevant date, it should be noted that both the applicant and the intervener submitted extracts from the online version of the German dictionary Duden, dated 2012, which contain a definition of the German word ‘Manufaktur’ identical to that accepted by the Board of Appeal, including the word ‘high’. Moreover, it is clear from a comparison of the sixth and seventh editions of the paper version of the German dictionary Duden, from 2006 and 2011 respectively, that the reference to high quality was added in the second of those editions. Therefore, taking into account, as did EUIPO, the fact that the meaning of a word changes over time and that a new edition of a dictionary calls for a period of preparation and editing, it must be concluded that the change in meaning of the German word ‘Manufaktur’ must have taken place long before 2011.

50Secondly, as regards the reference to individualised goods, to the extent that it is common ground that, on the relevant date, the German word ‘Manufaktur’ referred to the idea of something that was hand-crafted, it expressed the idea of more individualised production by comparison with factory and assembly line production. What is more, in Annex 10 to the observations of 7 June 2013, consisting of an article dated 15 June 2009, the German word combination ‘Finanzmanufakturen’ is used in such a way that it highlights the distinction between factory and assembly line production and artisanal production. Furthermore, the idea of a shift from artisanal to factory, and therefore assembly line and less individualised, production, is also apparent from Annex 21 to the observations of 7 June 2013, dated 2007, which refers to the German expressions ‘Industrialisierung der Kreditprozesse’ (industrialisation of the credit process), ‘Die Kreditmanufaktur als Ausgangbasis’ (provision of bespoke credit services as the starting point) and ‘Von der Kreditmanufaktur zur Kreditfabrik’ (a shift from the provision of bespoke credit services to ‘factory’ provision of credit services). Lastly, the idea that banks must offer a more individualised approach to the provision of services is apparent from Annexes 18 and 19 to the observations of 7 June 2013, containing information from 1927 and 1981 according to which, in essence, banks should not be financial intermediaries, but the providers of bespoke credit services.

51In the light of the foregoing considerations, it must be held that there is evidence prior to and after the relevant date which confirms the definition of the German word ‘Manufaktur’ used in the contested decision. In that regard, it should be noted that the Court has held on a number of occasions that material which, although subsequent to the date of filing of the application for registration, enables conclusions to be drawn with regard to the situation as it was on that date can, without erring in law, be taken into consideration (see judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 60 and the case-law cited; see also, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraph 41).

52The Board of Appeal therefore did not err in its assessment in concluding, in essence, that although the German word ‘Manufaktur’ originally referred to an undertaking in which goods were produced by hand, on the relevant date it also referred to the idea of individualised, high-quality production and could be used in relation to services.[omissis]

Operative part

On those grounds,THE GENERAL COURT (Sixth Chamber)hereby:

1.Dismisses the action;

2.Orders VM Vermögens-Management GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

3.Orders DAT Vermögensmanagement GmbH to bear its own costs.

Delivered in open court in Luxembourg on 7 September 2017.