Intesa Sanpaolo SpA v European Union Intellectual Property Office (T-529/15)

Contents

Judgment of the General Court (First Chamber)15 December 2016^note(EU trade mark — Application for EU figurative mark START UP INITIATIVE — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Council Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009))In Case T‑529/15,Intesa Sanpaolo SpA, established in Turin (Italy), represented by P. Pozzi and F. Braga, lawyers,vEuropean Union Intellectual Property Office (EUIPO), represented initially by P. Bullock, and subsequently by L. Rampini, acting as Agents,THE GENERAL COURT (First Chamber),composed of H. Kanninen (Rapporteur), President, I. Pelikánová and L. Calvo-Sotelo Ibáñez-Martín, Judges,Registrar: A. Lamote, Administrator,having regard to the application lodged at the Court Registry on 8 September 2015,having regard to the response lodged at the Court Registry on 5 November 2015,further to the hearing on 1 July 2016,gives the following

Judgment

Background to the dispute

1On 19 June 2014, the applicant, Intesa Sanpaolo SpA, lodged 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 mark in respect of which registration was sought is the following figurative sign:

3The services in respect of which registration was sought are in Classes 35, 36, 41 and 42 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, inter alia, to the following description:— Class 35: services in the field of advertising, business management and business consultancy;— Class 36: financing, evaluation services, real estate services, insurance services and investment services;— Class 41: services relating to training and education and services relating to sporting and cultural activities;— Class 42: scientific and technological services, industrial analysis and research services, the design and development of computer hardware and software.

4By decision dated 12 September 2014, the examiner refused the application for registration in respect of the services referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009.

5On 30 October 2014, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009.

6By decision of 29 June 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, the Board refused registration of the mark applied for on the grounds that the expression ‘start up initiative’ was not distinctive in any way and that the presence of a cartoon element in the mark applied for was not sufficient to confer any distinctive character on the trade mark as a whole for the purposes of Article 7(1)(b) of Regulation No 207/2009.

Forms of order sought

7The applicant claims that the Court should:— ‘find that there has been an infringement and misapplication of Article 7(1)(b), Article 7(2) and Article 75 of Regulation (EC) No 207/2009’;— annul the contested decision;— order EUIPO to pay the costs.

8EUIPO contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

Preliminary observations on the applicant’s first head of claim

9EUIPO submitted that the objective of the action could not be a declaratory judgment and that the applicant’s claim seeking a declaration that the contested decision was contrary to Article 7(1)(b), Article 7(2) and Article 75 of Regulation (EC) No 207/2009 should be interpreted as a claim seeking annulment of the contested decision.

10At the hearing, the applicant confirmed that its first head of claim was not independent of the second, under which it sought the annulment of the contested decision.

11In the light of this clarification, the first head of claim must be found to overlap, in essence, with the second head of claim seeking the annulment of the contested decision. There is, therefore, no need to rule on the first head of claim or, in particular, to rule on its admissibility.

Merits

12In support of its action, the applicant relies on two pleas in law, the first alleging infringement of Article 75 of Regulation No 207/2009 and the second alleging infringement of Article 7(1)(b) of that regulation.

First plea in law, alleging infringement of Article 75 of Regulation No 207/2009

13The applicant claims that the Board of Appeal infringed the obligation to state reasons.

14In that regard, it must be recalled that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and the Courts of the European Union to review the legality of the decision (see judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86 and the case-law cited, and of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 43 and the case-law cited).

15It follows from the Court’s case-law that an examination of the grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought (see judgment of 17 October 2013, Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 25 and the case-law cited).

16The Court has acknowledged that, where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned (see judgment of 17 October 2013, Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 26 and the case-law cited).

17However, such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. The mere fact that the goods or services concerned are within the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods and services which are not necessarily interlinked in a sufficiently direct and specific way (see judgment of 17 October 2013, Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 27 and the case-law cited).

18Homogeneity of the goods or services, within the meaning of the case-law cited in paragraph 17 above, is assessed with regard to the actual ground of refusal given in respect of the mark in question (see, to that effect, order of 11 December 2014, FTI Touristik v OHIM, C‑253/14 P, not published, EU:C:2014:2445, paragraph 48) and it is possible to use general reasoning for a series of goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned (judgment of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 28).

19In the present case, the applicant submits that the Board of Appeal carried out a ‘piecemeal and summary’ assessment in relation to each of the services covered by the mark applied for.

20For the services in Class 35, the applicant maintains that the reasoning given could not apply to services other than the writing of publicity texts. Some of the services in that class would not, in principle, be provided by a supplier to start-up businesses. That would be the case with services such as business management for athletes or newspaper subscription services for third parties, which could not be considered as services targeted at start-ups.

21For the services in Class 36, the applicant maintains that the Board of Appeal did not explain the connection there might be between, for example, safe-deposit services, collection services and customs agencies, on the one hand, and initiatives targeted at start-up businesses, on the other.

22For the services in Class 41, the applicant claims that the reasoning given is insufficient since those services, which include, inter alia, the arranging of beauty contests, are not homogenous.

23For the services in Class 42, the reasoning given in the contested decision cannot, according to the applicant, be applied to services such as underwater exploration, geological surveys or textile testing, which have no connection at all with services such as scientific and technological services, industrial analysis and research services or design and development services. In addition, the stated reason that start-up companies are set up in technologically innovative sectors conflicts with the statement that the services in class 41 cover entertainment and recreational activities.

24EUIPO contests the applicant’s arguments. It considers the plea to be ill-founded, principally on the ground that all the services covered by the mark applied for can be supplied to start-up companies or provided by start-up companies.

25In that respect, the services falling within Class 35 and covered by the mark applied for are the following: ‘Advertising, business management, business administration, office functions, bill-posting, rental of vending machines, rental of advertising time on communication media, commercial information agencies, advertising agencies, import-export agencies, updating of advertising material, commercial administration of the licensing of the goods and services of others, cost price analysis, commercial or industrial management assistance, professional business consulting, advisory services for business management, personnel management consulting, accounting, shop window dressing, dissemination of advertisements, sample distribution, demonstration of goods, business management of performing artists, direct mail advertising (leaflets, booklets, documents, samples), compilation of statistics, invoicing, business management of hotels, business management of sports people, computerised file management, business information, commercial information and advice for consumers, business investigations, layout services for advertising purposes, rental of advertising space, marketing, rental of photocopying machines, office machines and equipment rental, publicity material rental, organisation of trade fairs for commercial or advertising purposes, organisation of exhibitions for commercial or advertising purposes, organisation of fashion shows for promotional purposes, business efficiency expert services (business analysis), payroll preparation, presentation of goods on communication media for retail purposes, economic forecasting, production of advertising films, business management assistance, sales promotion for others, publication of publicity texts, on-line advertising on a computer network, advertising by mail order, publicity columns preparation, radio advertising, television advertising, compilation of information into computer databases, business inquiries, personnel recruitment, writing of publicity texts, public relations services, sponsorship search, data search in computer files for others, conducting market surveys, business research, document reproduction, personnel selection using psychological testing, arranging newspaper subscriptions for others, arranging subscriptions to telecommunication services for others, procurement services for others (purchasing goods and services for other businesses), price comparison services, business management and organisation consultancy, business organisation consulting, advisory services for business management, typing, photocopying services, modelling for advertising or sales promotion, news clipping services, relocation services for businesses, telephone answering for unavailable subscribers, secretarial services, shorthand, outsourcing services (business assistance), telemarketing services, compilation of information into computer databases, opinion polling, tax return preparation, drawing up of statements of accounts, business appraisal, market studies, transcription of communications (office functions), administrative processing of purchase orders, word processing, employment agencies, auctioneering services, business auditing’.

26In paragraph 20 of the contested decision, the Board of Appeal explained that, in respect of all those services, the mark applied for would be understood as an indication to the recipient of the services that, in the fields of advertising, business management and business consultancy, in particular, the services respond in a particularly appropriate way to the needs of start-up companies. The Board of Appeal stated that the mark applied for denoted both the recipient of the service, in other words the start-up company, and the specific way in which the latter would be supported by setting up initiatives in the various sectors indicated in the list of services from Class 35. The Board used as an example the writing of publicity texts and stated that the mark applied for would inform the public that the service represented an initiative which the provider placed at the start-up company’s disposal.

27In so doing, the Board of Appeal provided sufficient reasons in law in the contested decision in relation to the services falling within Class 35.

28In the circumstances of the present case, it was possible for the reasoning to be general, bearing in mind the services in question which fall, inter alia, into the fields of advertising, business management and business advice. Those services could be of interest to start-up companies, to the extent that, as the Board of Appeal rightly pointed out in paragraph 21 of the contested decision, the setting-up of a new company can require drawing up a business plan, planning an advertising campaign, receiving commercial advice, selecting personnel, hiring office equipment, typing, performing market research, and all of the other services listed in Class 35. The fact that other services are listed in that class, such as business management of sports people or arranging newspaper subscriptions for others, does not affect that assessment. First, business management of others and, in particular, of sports people, could be a service targeted at a start-up company, particularly one operating in the sports business. Secondly, arranging newspaper subscriptions for others could also be of interest to start-up companies, given that the companies could perfectly well need to take out such subscriptions as part of their business.

29It was therefore possible for the Board of Appeal to provide reasons as it did in paragraphs 20 and 21 of the contested decision without going into further detail. The reasons given can be applied to all the services within Class 35 and covered by the mark applied for, notwithstanding the diversity in those services.

30The services falling within Class 36 and covered by the mark applied for are the following: ‘Insurance, financial affairs, monetary affairs, real estate affairs, banking, rental of apartments, leasing of farms, credit bureaux, accommodation bureaux (apartments), debt collection agencies, customs agencies, real estate agencies, real estate management, apartment house management, financial management, financial analysis, accident insurance, fire insurance, illness insurance, marine insurance, life insurance, brokerage, charitable fund raising, insurance consultancy, financial consulting, mutual funds, deposits of valuables, safe deposit services, issuance of travellers’ cheques, issuance of tokens of value, issuance of credit cards, factoring, warranty services, home banking, financial information, insurance information, brokerage of carbon credits, fund investments, arranging of lease agreements, lease-purchase financing, rental of offices, insurance brokerage, real estate brokerage, stockbroking, currency trading and exchange services, clearing, financial, instalment loans, fiscal assessments, financial lending against security, loans (financing), pawnbrokerage, stock exchange quotations, organisation of collections, rent collection, actuarial services, credit card services, debit card services, savings bank services, financing services, provident fund services, business liquidation services, financial, retirement payment services, mortgage banking, trusteeship, financial sponsorship, financial evaluation of standing timber, real estate appraisal, stamp appraisal, jewellery appraisal, art appraisal, antique appraisal, coin appraisal, financial evaluation (insurance, banking, real estate), repair costs evaluation, financial evaluation of wool, electronic funds transfer, cheque verification’.

31In paragraph 23 of the contested decision, the Board of Appeal explained that a start-up company needed financing, evaluation services, real estate services, insurance services, investment services, and every other service that the applicant had listed in its trade mark application under Class 36. The Board specified that these were services vital for the business world in general, and even more so for companies that had just been set up and were operating in the new technologies sector and which were therefore more financially fragile or vulnerable.

32In so doing, the Board of Appeal provided sufficient reasons in law in the contested decision in relation to the services falling within Class 36 and covered by the mark applied for.

33Those services are interlinked in a sufficiently direct and specific way to the extent that, as the Board of Appeal stated in paragraph 24 of the contested decision, each of the services could ‘[fall] within the concept of an initiative set up by the applicant to support start-up companies’. On the basis of the evidence provided by the applicant, it could not be ruled out that services such as safe-deposit services, collection services and customs agencies could be of interest to companies that had recently been set up, in the same way as financing, evaluation services, real estate services, insurance services and investment services, for example.

34The services falling within Class 41 and covered by the mark applied for are the following: ‘Education, providing of training, entertainment, sporting and cultural activities, academies (education), animal training, rental of movie projectors and accessories, rental of show scenery, rental of theatre scenery, rental of tennis courts, rental of motion pictures, rental of sound recordings, rental of radio and television sets, coaching (training), sport camp services, circuses, music composition services, conducting fitness classes, timing of sports events, physical education, radio entertainment, television entertainment, dubbing, religious education, practical training (demonstration), providing sports facilities, providing golf facilities, providing on-line electronic publications, not downloadable, photography, amusement arcade services, amusement parks, gambling, entertainment information, education information, recreation information, gymnastic instruction, correspondence courses, sign language interpretation, layout services, other than for advertising purposes, night clubs, rental of videotapes, providing karaoke services, microfilming, production of radio and television programmes, videotape editing, rental of audio equipment, rental of lighting apparatus for theatrical sets or television studios, games equipment rental, rental of skin diving equipment, rental of sports equipment, except vehicles, toy rental, rental of sports grounds, rental of video cassette recorders, rental of stadium facilities, rental of video cameras, organisation of balls, organisation of sports competitions, arranging of beauty contests, organisation of competitions (education or entertainment), organisation of exhibitions for cultural or educational purposes, operating lotteries, organisation of fashion shows for entertainment purposes, organisation of shows (impresario services), arranging and conducting of concerts, arranging and conducting of conferences, arranging and conducting of congresses, arranging and conducting of colloquiums, arranging and conducting of seminars, arranging and conducting of symposiums, arranging and conducting of workshops (training), vocational guidance (education or training advice), boarding schools, party planning (entertainment), booking of seats for shows, rental of books, film production, other than advertising films, videotape production, production of music, production of shows, cinema presentations, educational examination, publication of books, publication of texts, other than publicity texts, publication of electronic books and journals on-line, electronic desktop publishing, presentation of live performances, theatre productions, writing screenplays, writing of texts, other than publicity texts, videotaping, photographic reporting, vocational retraining, music-halls, nursery schools, modelling for artists, mobile library services, ticket agency services (entertainment), calligraphy services, holiday camp services (entertainment), providing casino facilities (gambling), health club services (health and fitness training), club services (entertainment or education), news reporters services, disc jockey services, discotheque services, providing recreation facilities, zoological garden services, game services provided on-line from a computer network, language interpreter services, providing museum facilities (presentation, exhibitions), orchestra services, personal trainer services (fitness training), recording studios, translation and interpretation, entertainer services, subtitling, movie studios’.

35It should be noted that the Board of Appeal grouped all these services into three categories and provided detailed reasoning in relation to each of those categories.

36In paragraphs 26 to 28 of the contested decision, the Board of Appeal distinguished three groups of services: a group of services relating to training and education, a group of services relating to sporting and cultural activities, and a group of services relating to entertainment and recreational activities and the remaining services.

37In paragraph 26 of the contested decision, the Board of Appeal stated that, for the services relating to training and education, the expression contained in the mark applied for denoted the theme of the services, namely that ‘the training courses and the like are focused on initiatives intended to support start-up companies as they take their first steps’. In paragraph 27 of the contested decision, the Board of Appeal explained that, for the services relating to sporting and cultural activities, the mark applied for would be perceived as an indication that those activities constituted the materialising of initiatives for supporting companies which have recently been set up, and not as an indication of the origin of the service or of the activity of a particular company. The Board of Appeal concluded that, for those services, the mark applied for would serve a purely informative function. In paragraph 28 of the contested decision, the Board of Appeal specified that the same considerations applied to the services relating to entertainment and recreational activities and to the remaining services, in respect of which the mark applied for merely informed the public that those were activities and services forming part of an initiative carried out by a start-up company.

38In so doing, the Board of Appeal provided sufficient reasoning and the applicant has not presented any arguments to prove that the categories of services used by the Board of Appeal were incorrectly determined. It should also be pointed out that the arranging of beauty contests, commented upon by the applicant, falls perfectly into the third group of services identified by the Board of Appeal, comprising entertainment and recreational activities.

39The services falling within Class 42 and covered by the mark applied for are the following: ‘Scientific and technological services and research and design relating thereto, industrial analysis and research services, design and development of computer hardware and software, computer rental, updating of computer software, land surveying, construction drafting, chemical analysis, handwriting analysis (graphology), water analysis, computer system analysis, architecture, authenticating works of art, material testing, architectural consultation, consultancy in the field of energy-saving, consultation services relating to computer software, consultancy in the design and development of computer hardware, oil-well testing, quality control, vehicle roadworthiness testing, data conversion of computer programs and data, not physical conversion, conversion of data or documents from physical to electronic media, creating and maintaining web sites for others, design of interior décor, digitisation of documents (scanning), industrial design, duplicating computer programs, computer software design, oil-field surveys, geological surveys, underwater exploration, provision of scientific information, advice and consultancy in relation to carbon offsetting, providing search engines for the Internet, engineering services, cloud seeding, installation of software, rental of software, maintenance of software, monitoring of computer systems by remote access, rental of web servers, hosting computer sites, surveying, urban planning, design of information systems, computer programming, textile testing, recovery of computer data, oil prospecting, research and development of new products for others, geological prospecting, biological research, geological research, bacteriological research, chemical research, cosmetic research, physics (research), research in the field of environmental protection, mechanical research, technical research, analysis for oil-field exploitation, weather forecasting, chemist services, graphic art design, packaging design, dress designing, scientific laboratory services, computer virus protection services, styling (industrial design), technical project studies, calibration (measuring), quality evaluation of wool, quality evaluation of standing timber’.

40In paragraphs 29 to 31 of the contested decision, the Board of Appeal stated that all these services were scientific and technological services, industrial analysis and research services, the design and development of computer hardware and software and other services that were arranged alphabetically in Italian, ranging from computer rental to quality evaluation of timber, and also including cloud seeding, oil-well testing and dress designing. The purely informative message conveyed by the mark applied for in respect of those services and activities would be that they were respectively provided and carried out as part of business initiatives revolving around a start-up company. Start-up companies are set up in technologically innovative sectors, which are precisely those indicated by the list of services in Class 42. Use of the mark applied for in relation to such services and activities would fail to serve any distinctive function. Instead of informing the public about the commercial origin of the services and activities, it would merely tell them about the scope of business within which the services were provided and the activities carried out.

41It must be held that, in so doing, the Board of Appeal provided reasons for the contested decision that were sufficient in law, in relation to the services falling within Class 42. Those services were interlinked in a sufficiently direct and specific way, bearing in mind that they could all fall within the technologically innovative sectors within which start-up companies are set up. As to whether that reasoning conflicts with the reasoning put forward for some of the services in Class 41 covering entertainment and recreational activities, it should be noted that merely because the Board of Appeal stated, in the contested decision, that start-up companies are set up in technologically innovative sectors, such as those indicated by the list of services falling within Class 42, that cannot be taken to mean that start-up companies are never set up in other sectors, such as sectors in which entertainment and recreational services falling within Class 41 are provided. Consequently, the allegation that there was an internal conflict in the reasoning provided has no factual basis and must be rejected.

42In the light of all the foregoing, the Board of Appeal did not err in grouping the services covered by the mark applied for into various categories or in adopting general reasoning for each of those categories. Moreover, it should be noted that start-ups are likely to be found in a great many fields and, therefore, to need a wide range of services. This leads to the conclusion that the reasoning may be identical for different services which may be of interest to those start-ups and which may correspond to activities provided to them or by them, regardless of the fact that those services may not necessarily be homogenous. In those circumstances it was not necessary to repeat the same reasoning for each service or each category of services.

43The first plea in law must therefore be dismissed as unfounded.

Second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

44The applicant claims that the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009.

45The applicant contests the contested decision on the ground that it was found that the non-English-speaking public would understand the words ‘start up initiative’, whereas in fact a consumer outside English-speaking countries would not be able to understanding the meaning of those words and would perceive the mark applied for as a sign composed of entirely fanciful terms.

46According to the applicant, the mark applied for is not devoid of distinctive character in connection with the services listed in the trade mark application, being a complex mark made up of a combination of verbal elements and figurative elements which give it a distinctive character. The mark applied for appears as a fanciful logo consisting of the image of two words, ‘start’ and ‘initiative’, set over two lines and right-aligned. That image is accompanied by a cartoon speech bubble, evoking a stylised mouth pronouncing the word ‘up’. The strongly distinctive character of the mark applied for is demonstrated by the unconventional decision to attach that speech bubble to the words ‘start’ and ‘initiative’, rather than to a representation of a person. Thus the mark will stick in the mind of the consumer and fulfil its function of indicating the services provided.

47EUIPO contests the applicant’s arguments.

48Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

49The marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 20; of 21 January 2011, BSH v OHIM (executive edition), T‑310/08, not published, EU:T:2011:16, paragraph 23; and of 23 January 2014, Novartis v OHIM (CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 12).

50It is clear from the case-law that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 39, and of 23 January 2014, CARE TO CARE, T‑68/13, not published, EU:T:2014:29, paragraph 13).

51That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public, which consists of the consumers of those goods or services (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited).

52First of all, it must be noted that the Board of Appeal rightly stated that the relevant public was made up of people who, whether acting on a professional or non-professional basis, may require services to be provided in the advertising, business, finance, insurance, property promotion, education, culture, sport, entertainment, scientific research, technology, industrial design and engineering sectors, and in particular in the sectors of activity listed in the trade mark application, and that was not disputed by the applicant.

53The applicant challenges the contested decision on the ground that it was found that the non-English-speaking public would understand the words ‘start up initiative’. According to the applicant, a consumer outside English-speaking countries will not be able to understanding the meaning of those words and will perceive the mark applied for as a sign composed of entirely fanciful terms.

54In paragraph 14 of the contested decision, the Board of Appeal found that, in the economic sectors covered by the trade mark application, the use of English was extremely widespread and the public operating in these sectors within the Union was capable of reading and understanding the words ‘start up initiative’ and of identifying, in particular, the terms ‘start’ and ‘initiative’. In paragraph 16 of the contested decision, the Board of Appeal added that the expression ‘start-up’ was widely used in English to denote undertakings that had recently been founded and that the English word ‘initiative’ meant ‘venture’ or ‘effort’. Both expressions would be easily understood by a non-English- speaking public and the expression ‘start-up’ had entered into everyday language in Italy and was widely known to be associated with business ventures in the new technologies and internet sectors.

55That assessment is not vitiated by any error. As the Board of Appeal commented, the expression ‘start-up’ has now entered into everyday language in Italy, as in other Member States, to a sufficient degree that it could be held to be understandable even to a non-English-speaking section of the public. Besides the fact that the applicant relied on examples based on very specific categories of persons, the applicant did not provide any evidence to show that a large proportion of the relevant public would not know the term ‘start-up’, could not understand that term correctly and would not know the term ‘initiative’. Neither did the applicant show that the public who would know the terms ‘start-up’ and ‘initiative’ constituted a negligible proportion of the relevant public. It must be recalled that, for a sign to fall within the scope of the prohibition in Article 7(1)(b) of Regulation No 207/2009, it is sufficient that a ground of refusal exists in relation to a non-negligible proportion of the target public and it is unnecessary to examine whether the other consumers belonging to the relevant public are also aware of that sign (see, to that effect, judgment of 25 November 2015, bd breyton-design v OHIM (RACE GTP), T‑520/14, not published, EU:T:2015:884, paragraph 29 and the case-law cited). In addition, it should be noted that, under Article 7(2) of Regulation No 207/2009, Article 7(1) of that regulation applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

56Turning to the question of whether the sign applied for is devoid of any distinctive character, it must be recalled from the outset that, as regards a trade mark comprising various word elements and figurative elements, the distinctiveness of each of those terms or elements, taken separately, may be assessed, in part, but must, in any event, depend on an appraisal of the whole which they comprise. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character (see, to that effect, judgment of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 28).

57The Board of Appeal found that the element consisting of the cartoon speech bubble represented only a small part of the entire trade mark and that it had a relatively marginal impact on the visual impression of the mark applied for as a whole. The Board also found that it had not been demonstrated that the public would perceive the element in question as a cartoon speech bubble, as in principle a speech bubble emanates from the mouth of a person in order to convey a message. The Board held that, since no person was discernible in the mark applied for, the public would not perceive the shape surrounding the word ‘up’ as a cartoon speech bubble, but rather as a mere fanciful frame. The public would tend to read the words ‘start up’ and ‘initiative’ in a logical sequence. That sequence would form a meaningful expression, unlike the expression ‘start initiative up’. Additionally, the fact that the word ‘up’ appears inside a cartoon speech bubble and is written in white letters on a dark background would not prevent the public from automatically reading this word after ‘start’, since ‘start-up’ is a concept that will be familiar to them, unlike ‘start initiative’.

58That assessment is not vitiated by any error.

59First of all, it is indisputable that the expression ‘start up initiative’ has a proper meaning, recognisable by the public, which is not the case with the expression ‘start initiative up’. It is unlikely that the public will remember the latter expression rather than the former.

60Next, the fact that cartoon techniques are used in a sign is not sufficient to give the sign a distinctive character, given that such techniques are commonly used for all sorts of communications and media.

61In the present case, the speech bubble appears to be a simple figurative element, especially since, as the Board of Appeal essentially pointed out, it departs from the technique most frequently used in cartoons to visually represent a word, due to the absence of any person or any other figure in the mark applied for. The public will therefore not necessarily perceive the shape surrounding the word ‘up’ as a cartoon speech bubble, but rather as an extremely simple frame, which is therefore not capable, per se, of communicating a message that consumers will remember (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Device of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraphs 22 and 23 and the case-law cited).

62Finally, it must be recalled that a word is descriptive and lacking in any distinctive character if at least one of its possible meanings designates a characteristic of the goods or services concerned. That is the case if the link established between the content of the word, on the one hand, and the goods or services in question, on the other, is sufficiently specific and direct to prove that the word enables the goods or services to be immediately identified in the minds of the relevant public (see judgment of 14 January 2016, International Gaming Projects v OHIM (BIG BINGO), T‑663/14, not published, EU:T:2016:5, paragraph 25 and the case-law cited).

63Given that the relevant public will principally remember the expression ‘start up initiative’, the Board of Appeal’s assessment as to the lack of any distinctive character must be confirmed in relation to the various services covered by the said mark.

64With regard, first, to the services falling within Class 35, the mark applied for can be understood as an indication of the recipients of the services, in other words that those services, in the fields of advertising, business management and business consultancy, respond in a particularly appropriate way to the needs of start-up companies, as the Board of Appeal rightly found in paragraph 20 of the contested decision.

65With regard, secondly, to the services falling within Class 36, the mark applied for can be understood as an indication, on the one hand, of the entities at which the services are targeted, namely start-up companies, and, on the other, of the type of initiative, in the field of finance, insurance and real-estate management, that is being placed at their disposal, as the Board of Appeal also rightly found in paragraph 22 of the contested decision.

66With regard, thirdly, to the services falling within Class 41, the mark applied for can denote the theme of the services covered by the three categories determined by the Board of Appeal in paragraphs 26 to 28 of the contested decision. Thus, for the first category, covering services relating to training and education, the mark applied for can denote services intended to support the launch of a start-up company. For the second category, covering services relating to sporting and cultural activities, the mark can denote the materialising of initiatives supporting start-up companies. For the third category, relating to entertainment and recreational activities and to the remaining services, it can denote the services forming part of an initiative carried out by a start-up company.

67With regard, fourthly, to the services falling within Class 42, which cover scientific and technological services, industrial analysis and research services, the design and development of computer hardware and software and services ranging from computer rental to quality evaluation of standing timber, to cloud seeding, oil-well testing and dress designing services, the mark applied for can be understood, as the Board of Appeal found in paragraphs 29 and 30 of the contested decision, as meaning that the said services are provided and the activities in question are carried out as part of business initiatives revolving around a start-up company, which are set up in technologically innovative sectors.

68In the light of all the foregoing, the Board of Appeal did not err in holding that the mark applied for was devoid of distinctive character. The second plea must therefore be dismissed as unfounded and, in consequence, the action must be dismissed in its entirety.

Costs

69Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

Operative part

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

1.Dismisses the action;

2.Orders Intesa Sanpaolo SpA to pay the costs.

Delivered in open court in Luxembourg on 15 December 2016.