Contents
Judgment of the General Court (First Chamber)19 December 2019note(EU trade mark — Invalidity proceedings — EU word mark CINKCIARZ — Absolute grounds for refusal — Distinctive character — No descriptive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001) — Pejorative term relating to the goods or services at issue)In Case T‑501/18,Currency One S.A., established in Poznań (Poland), represented by P. Szmidt and B. Jóźwiak, lawyers,vEuropean Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingCinkciarz.pl sp. z o.o., established in Zielona Góra (Poland), represented by E. Skrzydło-Tefelska and K. Gajek, lawyers,THE GENERAL COURT (First Chamber),composed of P. Nihoul, acting as President, J. Svenningsen (Rapporteur) and U. Öberg, Judges,Registrar: J. Palacio González, Principal Administrator,having regard to the application lodged at the Court Registry on 22 August 2018,having regard to the response of EUIPO lodged at the Court Registry on 31 October 2018,having regard to the response of the intervener lodged at the Court Registry on 30 October 2018,further to the hearing on 7 May 2019,gives the following
Judgment
Background to the dispute
1On 26 January 2015, the intervener, Cinkciarz.pl sp. z o.o., 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2Registration as a mark was sought for the word sign CINKCIARZ.
3The goods and services in respect of which registration was sought are in Classes 9, 36 and 41 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 inter alia to the following description:– Class 9: ‘Computer software; computer game software; computer programmes [programs], recorded; computer programs, downloadable; computer applications downloadable via the internet; data processing programs; interactive multimedia computer programs; publications downloadable in electronic form from the internet; computer hardware and accessories; data media (magnetic and optical); apparatus for recording, transmission or reproduction of sound or images; sunglasses’;– Class 36: ‘Banking; exchanging money; bureau de change services; provision of information relating to rates of exchange; provision of foreign currency; trading in currencies; on-line real-time currency trading; financial information in the nature of rates of exchange; currency exchange rate quotations; forecasting of foreign exchange rates; foreign exchange market; computerised financial services relating to foreign currency dealings; preparation and quotation of exchange rate information; swaps of currency rates; provision of pricing information about foreign exchange rates; money exchange agency services; foreign monetary exchange advisory services; financial database services relating to foreign exchange; money exchange and transfer; provision of exchange rate lists; foreign exchange bureaux; cash, check (cheque) and money order services; electronic funds transfer by telecommunications; automated payment services; money transmission services; electronic payment services; real estate agency; debt collection agencies; financial analysis; online banking; financial information; banking; mortgage banking; credit bureaux; rent collection; financial consultancy; insurance consultation; financial management; financial evaluation (insurance, banking, real estate); financial consultancy; financial information; banking; finance services; mutual funds; security funds; stock exchange quotations; securities brokerage; guarantees; insurance information; financial information; financial information; fund investments; fund investments; electronic funds transfer; services related to credit and debit cards; debit and credit card services; issuance of credit and debit cards; insurance brokerage; securities brokerage; stock exchange quotations; tax assessments; securities brokerage; insurance brokerage; loans (financing); banking; insurance; exchanging money; financial management; real estate management; management of assets’;– Class 41: ‘Publication of texts (other than publicity texts); online publication of electronic, non-downloadable materials; publication of material which can be accessed from databases or from the internet; electronic game services and competitions provided by means of the internet; information relating to education, provided on-line from a computer database or the internet; educational services; education information; movie studios; photography; photographic reporting; provision of amusement arcades; providing online games; gambling; club services (entertainment or education); electronic desktop publishing; practical training demonstrations; arranging and conducting of workshops and training; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of colloquiums; organization of competitions education or entertainment; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable; publication of books; publication of texts (other than publicity texts)’.
4The mark at issue was registered on 15 June 2015 under No 13678991 for, amongst others, the goods and services referred to in paragraph 3 above.
5On 22 December 2015, the applicant, Currency One S.A., filed an application for a declaration of invalidity of the mark at issue pursuant to Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001) in respect of all the goods and services referred to in paragraph 3 above and based, first, on Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001, the wording of which is identical and to which reference will be made below), on the ground that the sign making up that trade mark was descriptive of those goods and services, and, second, on Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001, the wording of which is identical and to which reference will be made below), on the ground that that trade mark was devoid of any distinctive character.
6That application for a declaration of invalidity was rejected by decision of the Cancellation Division of 6 October 2017.
7On 5 December 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001.
8By decision of 18 June 2018 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal.
9With regard, first, to the ground laid down in Article 7(1)(c) of Regulation 2017/1001, it found that the term ‘cinkciarz’ was not descriptive of the goods or services at issue or of an essential characteristic of them in any of its meanings. In particular, it took the view that that term, which, originally, under the People’s Republic of Poland, designated the persons who engaged in the illegal trade in foreign currencies, has, in its current meaning relating to a currency exchange activity, exclusively negative connotations, thereby ruling out a neutral designation of such an activity. Accordingly, that term is a fanciful indication, admittedly suggestive or allusive, but which, by virtue of that very fact, is merely indirectly descriptive of that activity and can steer consumers towards the characteristics of services related to that activity only via a mental association. With regard, second, to the ground laid down in Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal found that the sign CINKCIARZ is perceived by the relevant public as an original indication, which is misleading or ironic and, by virtue of that very fact, surprising, capable of indicating the commercial origin of the services related to the currency exchange activity. Lastly, it considered those assessments to apply a fortiori in respect of the other goods or services at issue.
Forms of order sought
10The applicant claims that the Court should:– annul the contested decision;– order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.
11EUIPO and the intervener contend that the Court should:– dismiss the action;– order the applicant to pay the costs.
Law
12The applicant puts forward three pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 in relation to the currency exchange services, second, infringement of that same provision and of the obligation to state reasons in relation to the other goods and services at issue and, third, infringement of Article 7(1)(b) of that regulation.
13As a preliminary point, it should be recalled, first, that, pursuant to Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services, are not to be registered.
14In order that a sign may be regarded as descriptive and, therefore, fall within the scope of the prohibition in that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgment of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited).
15Second, pursuant to Article 7(1)(b) of that regulation, trade marks which are devoid of any distinctive character are not to be registered.
16For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
17A sign may be identified as originating from a particular undertaking and thus possess distinctive character where it requires a measure of interpretation on the part of the relevant public and exhibits a certain originality and resonance which makes it easy to remember (see, to that effect, judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 59).
18It follows from those preliminary considerations that, in order to assess the merits of the pleas in law put forward by the applicant, it is necessary to determine beforehand the meaning of the Polish term ‘cinkciarz’, which must be established in relation to the understanding of that term by the relevant public (see, to that effect, judgment of 8 July 2008, Lancôme v OHIM — CMS Hasche Sigle (COLOR EDITION), T‑160/07, EU:T:2008:261, paragraph 44 and the case-law cited).
19In that connection, it is apparent from the documents produced in the context of the administrative procedure that the term ‘cinkciarz’ referred to a person who secretly carried out illegal currency exchange activities when, at the time of the People’s Republic of Poland or immediately thereafter, the State had a monopoly over those activities. A negative connotation was attached to that term in relation to an activity regarded as trafficking and carried out by suspicious individuals. Following the legalisation of the pursuit of currency exchange activities by persons governed by private law in 1989, it has since been possible for those activities to be carried out openly by foreign exchange bureaux, which, by virtue of their lawful nature, have been distinguished from the persons referred to by the abovementioned term. From that point onwards, the term appears to have acquired an essentially historical meaning, designating the persons who carried on illegal and clandestine currency exchange activities up until 1989.
20In view of the fact that the original context behind the term ‘cinkciarz’ ended only in 1989 and given the notoriety of the historical image of the persons referred to by that term in Polish culture, as demonstrated inter alia by various headlines of articles referring to that figure (Annexes E.20 and E.24 to E.26), but also by recent publications on the subject (Annexes E.19, E.21 and E.36 to E.41), the view must be taken that, at the moment when the application for registration of the mark at issue was filed, on 26 January 2015, the majority of the relevant public was aware of the historical meaning of that term.
21In observing in paragraph 10 of the application, with regard to the term ‘cinkciarz’, that that ‘profession … is not officially recognised’ or that ‘its glory days are over’, the applicant implicitly concedes that that term essentially describes a person secretly engaged in currency exchange at the time of the People’s Republic of Poland. Furthermore, it explicitly acknowledges, in paragraph 11 of the application, that that term is primarily used in publications to describe such a person. It does however state, in the same two paragraphs of the application, that the ‘profession’ consisting in engaging in the ‘illegal trade in currencies’ has not disappeared and that a person currently engaging in such activities may still be described by the term ‘cinkciarz’, whilst acknowledging, in paragraph 12 of the application, that that term has a negative connotation and is used in a critical and primarily pejorative manner.
22Those claims are supported by certain of the evidence adduced as part of the administrative procedure.
23In that regard, the definitions taken from dictionaries (Annexes E.1 to E.15) are ambiguous. Although they all state that the noun ‘cinkciarz’ is a colloquial term designating a currency trafficker, the definitions quoted appear to correspond to the historical meaning of that term. However, certain articles published on the internet demonstrate that that term has continued to be used and understood to describe a person currently engaging in currency exchange carried out secretly and fraudulently — and thus illegally — like the ‘cinkciarz’ who existed at the time of the People’s Republic of Poland (Annexes E.32 and E.33) and, related thereto, to any activity whatsoever of a fraudulent, unlawful or dishonest nature or which is regarded as being such (Annex E.31).
24Be that is it may, in stating, in paragraph 10 of the application, that the term ‘cinkciarz’ may also designate ‘a trader providing currency exchange services outside official channels’ and, in paragraph 25 of the application, that that term ‘is commonly used in the context of the supply of services relating to currency exchange outside official channels by multiple traders’, adding, in paragraph 24 of the application, that the term ‘is used, under normal circumstances, to refer to the goods or services’ at issue, the applicant appears to imply that the term ‘cinkciarz’ may also be used neutrally, that is to say without a negative or pejorative connotation, to describe a natural or legal person carrying on currency exchange activities. The application does not, however, contain any reference to the documents produced in the context of the administrative procedure.
25When questioned on this point at the hearing, the applicant stated that that claim was borne out by Annexes E.29, E.30 and E.34.
26In subsequently submitting the article which forms Annex E.30, entitled ‘How cinkciarz extort money from travellers at airports’, it has however conceded that that article was a critical analysis of an activity representing a form of fraud. With regard to the article which forms Annex E.29, entitled ‘Is the government playing at being a cinkciarz?’, it simply stated that that article demonstrates the current use of the term ‘cinkciarz’, without claiming that it had no critical scope.
27By contrast, the applicant submitted, once again at the hearing, that, in the article forming Annex E.34, published on 17 April 2014 and entitled ‘The internet cinkciarz. The story of four guys who “pinched” 20 billion from the banks’, the term ‘cinkciarz’ was used to describe multiple different economic entities, including the applicant and the intervener, or to designate ‘currency trading services outside official channels’.
28It may be inferred from the content of the latter article that, by the expression ‘different economic entities’, the applicant was referring to undertakings which carry out currency exchange activities via a different channel, namely on the internet, and differentiating themselves from banks vis-à-vis the exchange rates applied. It follows from that article that those undertakings have flourished thanks to a law of 2011 which allowed borrowers who had taken out loans denominated in Swiss francs with Polish banks to make the monthly payments on those loans using currency purchased using traders other than those banks. The article in question reported that the applicant and the intervener accounted for almost the entirety of the Polish market in online currency exchange in more or less equal shares, with some 40 other undertakings also present on that market to a very marginal degree.
29However, contrary to what the applicant claims, that article does not establish that the term ‘cinkciarz’ is used to describe, in a neutral manner, certain undertakings providing currency exchange services, namely those operating online, or to designate the services provided by those undertakings.
30The article in question essentially focuses on two undertakings, one of which is the intervener, which is referred to by name on several occasions. In that context, the presence of the term ‘cinkciarz’ in the title and in a passage of that article cannot be taken into consideration without account being had of the intervener’s name. In addition, as is apparent from that article’s title, the use of that term in it refers not to the two undertakings which form the subject matter of the article in question themselves but rather the four persons who founded those undertakings, whose careers are described and whose remarks are reported. Similarly, on the only occasion on which it appears in the text of the article, the term ‘cinkciarz’ refers not to those two undertakings but to their founders, those undertakings being introduced as ‘their business’. Furthermore, where they are not mentioned by reference to their commercial name or to the names referring to their websites (Currency One, Internetowykantor.pl and Walutomat.pl, on the one hand, and Cinkciarz.pl, on the other), those undertakings are referred to in the article in question by terms such as ‘online foreign exchange bureaux’ or ‘virtual foreign exchange bureaux’.
31Incidentally, it may be observed that, in paragraph 33 of the contested decision, the Board of Appeal conducted an essentially similar analysis of the documents forming the basis of the opinion making up Annex E.43, the only opinion referencing a neutral meaning of the term ‘cinkciarz’. The applicant has neither contested that analysis nor relied on that opinion before the Court.
32In conclusion on this point, it appears that two meanings of the term ‘cinkciarz’ are linked to currency exchange services. The first is a historical meaning used to describe a person who secretly and illegally engaged in currency exchange at the time of the People’s Republic of Poland. The second is a contemporary meaning in which that term is used in a general, derivative sense as a synonym for a swindler or fraudster, but also, in a sense close to that of its historical meaning, to describe a person currently still engaging in secret and fraudulent — and therefore illegal — currency trading. By contrast, as the Board of Appeal rightly found, it has not been established that the term ‘cinkciarz’ currently describes, in a neutral manner, a person or undertaking providing currency exchange services.
33It is on the basis of those meanings of the term ‘cinkciarz’ that the merits of the applicant’s pleas in law should be examined.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001 as regards the currency exchange services
34The applicant claims that the term ‘cinkciarz’ may be used to describe a trader providing currency exchange services outside official channels and that, therefore, it is the name of a profession which must be freely available for use, regardless of the fact that it is primarily used in a negative sense.
35EUIPO and the intervener contest the merits of this plea. In the intervener’s view, the term ‘cinkciarz’ has only a historical meaning, describing a person engaging in unlawful currency trafficking at the time of the People’s Republic of Poland, and is not used to designate current currency exchange activities.
36According to Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services, are not to be registered.
37As has been observed in paragraph 14 above, for a sign to fall within the scope of the prohibition in Article 7(1)(c) of Regulation 2017/1001, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics.
38The distinctiveness of a mark may be assessed, firstly, only in relation to the understanding of the mark by the relevant public and, secondly, in relation to the goods and services concerned (see judgment of 8 July 2008, COLOR EDITION, T‑160/07, EU:T:2008:261, paragraph 44 and the case-law cited).
39In the present case, the goods and services at issue are, essentially, in the case of Class 9, computer software, electronic publications and data media, in the case of Class 36, banking and financial services, currency exchange services, agency services and real estate management services, debt collection services, insurance services and tax assessments, and, in the case of Class 41, publishing and publication services, game services and education and training services. The Board of Appeal found that such goods and services are intended for both professionals and the general public and that the level of intention paid by the relevant public varies from average to high. It further held that the assessment of the descriptive nature of the mark at issue had to be made from the point of view of the Polish-speaking public, since that trade mark consists of a term with a meaning in that language.
40Those findings are not contested and nothing has been put forward capable of calling them into question. It must, however, be observed that the fact that the relevant public is, in part, a specialist one cannot have a decisive influence on the legal criteria used to assess the descriptiveness of a sign (judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 14).
41In prohibiting registration as trade marks of the signs and indications to which it refers, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
42The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 43).
43In order for registration of a sign to be refused under Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
44Finally, it should be recalled that, pursuant to Article 7(2) of the same regulation, Article 7(1) thereof applies even where the grounds for refusal obtain in only part of the Union; that part may be restricted to a single Member State (see, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 83).
45By the present plea in law, the applicant claims that the term ‘cinkciarz’ is descriptive of the currency exchange services, such that the registration of the mark at issue, which consists exclusively of that term, should have been cancelled in so far as that mark covers those services.
46It follows from the considerations set out in paragraphs 19 to 32 above that the term ‘cinkciarz’, in its meanings relevant to the present case, first, has both a historical and a current connection with currency exchange services and, second, has an exclusively pejorative connotation, incorporating a negative idea disparaging the person described, namely a person who engages in trafficking, fraud or acts regarded as dishonest, in particular, but not exclusively, in the context of currency exchange transactions conducted in secret.
47The applicant submits that the application of Article 7(1)(c) of Regulation 2017/1001 does not require that a descriptive indication be positive or neutral but merely that it describe goods or services covered by an application for registration or a characteristic of those goods or services. In addition, the negative connotation of the term ‘cinkciarz’ might disappear over time.
48In accordance with the case-law recalled in paragraphs 37 and 38 above, Article 7(1)(c) of Regulation 2017/1001 may be applied only where, taking into account the understanding of the contested sign by the relevant public, that sign suggests a sufficiently direct and concrete link to the service in question to enable that public immediately, and without further thought, to perceive a description of that service or of one of its characteristics.
49That case-law must be combined with the case-law according to which descriptive signs or indications for the purposes of that provision are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of those essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 28 June 2012, XXXLutz Marken v OHIM, C‑306/11 P, not published, EU:C:2012:401, paragraph 77 and the case-law cited).
50In that regard, it should be recalled that, as is apparent from recital 3 thereof, Regulation 2017/1001 seeks to contribute to removing barriers to the free movement of goods and services within the internal market. However, those freedoms cover only goods released into the economic and commercial channels of the European Union legally (see, to that effect, judgment of 16 December 2010, Josemans, C‑137/09, EU:C:2010:774, paragraph 42) and, by analogy, the provision of legal services. It follows that the protection provided for under EU trade mark law may be granted to a trade mark only in so far as that mark designates legal goods and lawfully provided services.
51It must be assumed that the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, will be aware of that fact, at the very least because he knows that the European Union is founded on the values of the rule of law, as follows from Article 2 TEU, and that it is inherent in a State based on the rule of law that the law cannot seek to protect or promote unlawful acts, that feature of a State based on the rule of law being common knowledge. In that regard, it should be emphasised that, contrary to what the applicant argues, the term ‘cinkciarz’ cannot be regarded as designating a ‘profession’ where it is exclusively concerned with the performance of unlawful acts.
52Accordingly, in the present case, the relevant public will be aware of the fact that the services covered by the mark at issue may not be illegal and clandestine currency exchange activities.
53It follows that the term ‘cinkciarz’, which makes up that mark and which describes such illegal and clandestine activities, may not serve in normal usage from a consumer’s point of view to designate legal currency exchange services. A connection can be made, in this regard, with the case-law according to which, in the case of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services in respect of which registration is sought, Article 7(1)(c) of Regulation 2017/1001 does not preclude the registration of geographical names in respect of which, because of the type of place they designate, the relevant class of persons is unlikely to believe that the category of goods concerned originates there (see judgment of 6 September 2018, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 39 and the case-law cited).
54Accordingly, the term ‘cinkciarz’ does not enable the relevant public to perceive immediately, and without further thought, a description of legal currency exchange services or of an entity providing such services. Since an inherent characteristic of that term, namely that it designates illegal and clandestine activities, is entirely at odds with a characteristic of such services, namely their inherently lawful nature, the relevant public will be able to make a link between the mark at issue and legal currency exchange services only by overcoming that contradiction to reach the conclusion that, ironically and relying on a ‘mind game’ effect, that mark, contrary to its meaning, covers currency exchange services that are provided lawfully.
55Accordingly, the mark at issue does not suggest a sufficiently direct and concrete link to the currency exchange services covered by that mark.
56That conclusion is supported by an analysis in the light of the aim in the public interest pursued by the prohibition on registration laid down in Article 7(1)(c) of Regulation 2017/1001, an aim which must be taken into account as part of the concrete examination of all the relevant aspects of an application for registration (see, by analogy, judgment of 8 April 2003, Linde and Others, C‑53/01 to C‑55/01, EU:C:2003:206, paragraph 75) or, as in the present case, a registration in respect of which a declaration of invalidity is sought.
57In accordance with the case-law recalled in paragraph 41 above, that provision seeks to ensure that signs and indications which describe characteristics of the services at issue may be used freely by all relevant traders. If an undertaking were allowed to monopolise the use of a descriptive term, this would limit the range of words available to its competitors to describe their own goods (see, to that effect, judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 18 and the case-law cited). That aim in the public interest itself forms part of the system of undistorted competition which the FEU Treaty seeks to establish and maintain and of which trade mark rights constitute an essential element (see, by analogy, judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraphs 48 to 52).
58It follows from the findings made regarding the meaning of the term ‘cinkciarz’ that that term is inextricably linked to an essential aspect of the activity which it designates, namely its clandestine and illegal nature, which is entirely at odds with a characteristic of the currency exchange services at issue, namely their inherently legal nature.
59Lastly, it is admittedly true that, pursuant to the actual wording of Article 7(1)(c) of Regulation 2017/1001, the signs and indications which may not be registered under that provision are those which are simply capable of being used for descriptive purposes; those signs or indications do not actually have to be in use at the time of the application for registration.
60Nevertheless, such possible use can be taken into consideration only if it is reasonable to assume that the sign in question may in the future, in the mind of the relevant class of persons, represent a description of the characteristics of the goods or services concerned (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 56 and the case-law cited). Accordingly, that possibility cannot be based on mere speculation but must rather, on the contrary, by substantiated by certain evidence which renders it inter alia reasonably plausible (see, to that effect, judgment of 12 March 2008, Compagnie générale de diététique v OHIM (GARUM), T‑341/06, not published, EU:T:2008:70, paragraph 43).
61The possibility envisaged by the applicant that the term ‘cinkciarz’ may in the future lose the negative connotation associated with the unlawful and clandestine nature of the activity to which it refers, which is inherent in that term, and, as a result, designate in a neutral fashion the pursuit of currency exchange activities constitutes such speculation.
62In that regard, it should be recalled that, as follows from the documents produced in the context of the administrative procedure and from the findings made in paragraphs 19, 23 and 32 above, since its origin, the term ‘cinkciarz’, in the meanings of that term relevant in the present case, has had a negative meaning associated with the unlawful and clandestine nature of the activities of the persons which it designates and, following the development of the historical context in which it appeared, its scope evolved by emphasising that negative aspect, since its use has broadened to refer to a person engaging in an activity regarded as unlawful, fraudulent or dishonest. In addition, as follows from paragraphs 29 and 30 above, there is no relevant indication to suggest that that term would also be used neutrally to designate a trader providing currency exchange services.
63In the light of those factors, it does not appear to have been reasonable to assume, at the date on which the application for registration of the mark at issue was filed, that the term ‘cinkciarz’ would, in the future, in the mind of the relevant class of persons, constitute a description of the services at issue.
64It follows from all the foregoing considerations that the Board of Chamber was right to decide that the mark at issue could not be cancelled pursuant to Article 7(1)(c) of Regulation 2017/1001 as regards the currency exchange services. The first plea in law must therefore be rejected as unfounded.
The second plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001 and of the obligation to state reasons as regards the goods and services at issue other than the currency exchange services
65The applicant claims that the contested decision is vitiated by a failure to state reasons vis-à-vis the dismissal of the application for a declaration of invalidity in so far as that application was based on the descriptive nature of the goods and services at issue other than the currency exchange services, because the Board of Appeal took account of those other goods and services generally and not on a category-by-category basis.
66In paragraph 59 of the contested decision, in adopting, in that regard, the reasoning used in the Cancellation Division’s decision, the Board of Appeal found that, since the term ‘cinkciarz’ was not descriptive of the currency exchange services, this was a fortiori the case in relation to the other goods and services at issue, which had an even weaker connection to that term.
67It should be recalled that the obligation to state reasons, an obligation incumbent on the Board of Appeal and which follows inter alia from Article 94(1) of Regulation 2017/1001, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question. The statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 64 and 65 and the case-law cited).
68In that connection, it must be observed that the line of argument put forward by the applicant before the EUIPO bodies, as well as that set out in the application, was limited to indicating how certain categories of goods and services at issue, other than the currency exchange services, could, in its view, be linked to the latter services or to the persons providing such services. It inferred from that fact that the term ‘cinkciarz’, which it considered to be descriptive as regards the exchange services, was also descriptive of a characteristic of those other goods and services.
69In such circumstances, and since it had previously found that the term ‘cinkciarz’ was not descriptive in relation to the currency exchange services, thereby dismissing the premiss underpinning the applicant’s argument relating to the goods and services other than the currency exchange services, the Board of Appeal could provide only general reasoning for all of the goods and services concerned.
70EUIPO is allowed to adopt a general reasoning, in the light of an absolute ground for refusing registration, for goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category of goods or services in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not the ground for refusal concerned may apply. The assessment must be carried out in concreto in each individual case, without it being ruled out that the goods and services covered by an application for registration all present a relevant characteristic for the analysis of an absolute ground for refusal and that, therefore, they can be placed, for the purposes of examining the application for registration at issue in relation to that absolute ground for refusal, in a sufficiently homogeneous single category (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 30 to 34).
71In the present case, the applicant had itself categorised the goods and services other than the currency exchange services in relation to a single, general characteristic which justified the sign CINKCIARZ being found to be descriptive vis-à-vis those other goods and services, namely that they are all linked to currency exchange activities.
72Accordingly, after having found that the mark at issue was not descriptive as regards the currency exchange services themselves, the Board of Appeal was entitled, as part of a sufficient examination, to take the view that that finding applied a fortiori in respect of goods and services other than currency exchange services with some link to the latter. In so doing, it carried out an assessment in concreto, ruling on the link on which the applicant itself based its application for cancellation, pursuant to Article 7(1)(c) of Regulation 2017/1001, in respect of those other goods and services. In addition, that examination resulted in a conclusion consistent with that provision.
73The second plea in law must therefore be rejected as unfounded.
The third plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
74In the first place, the applicant claims that Article 7(1)(b) of Regulation 2017/1001 must apply on account of the descriptive nature of the sign CINKCIARZ, since a descriptive sign is necessarily devoid of any distinctive character.
75In the second place, the applicant criticises the Board of Appeal for failing to examine the distinctiveness of the mark at issue in relation to the goods and services at issue and to the relevant public’s perception of that mark. In particular, the pejorative nature of the term ‘cinkciarz’ does not preclude a mark from being found to be devoid of any distinctive character. In the present case, since that term is in common use in the context of the provision of currency exchange services outside official channels, the trade mark consisting in that term cannot perform the function of identifying the commercial origin of the goods and services at issue. For the same reason, the term does not have a fanciful, atypical, unexpected or surprising aspect for the Polish public.
76The Board of Appeal found that the word sign CINKCIARZ would be understood by the relevant public as designating a person who engages in unlawful currency trading, a speculator or a fraudster. When used in relation to the goods and services in question, it would be perceived by that public as an original name which is misleading or ironic and, by virtue of that very fact, surprising, and capable of indicating the commercial origin of the goods or services in question and easily remembered as such.
77Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
78As has been recalled in paragraph 16 above, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
79That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is applied for and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
80Firstly, it must be stated from the outset that, in view of the responses provided to the first and second pleas in law, the applicant’s line of argument must be rejected in so far as it is based on the claim that the mark at issue is descriptive in respect of the goods and services at issue.
81Next, it follows from paragraphs 53 and 54 of the contested decision that, contrary to the applicant’s claim, the Board of Appeal did examine the distinctiveness of the mark at issue taking into account the perception of the relevant public and the goods and services at issue. Although, admittedly, it is apparent from the context that, implicitly, the analysis contained in those paragraphs essentially concerns currency exchange services, account should be taken of the fact that, in paragraphs 59 and 60 of that decision, the Board of Appeal broadened its reasoning by taking the view that the findings made in relation to currency exchange services applied a fortiori to the other contested goods and services given the weaker link that exists between those other goods and services and the term ‘cinkciarz’.
82Lastly, as the claim that the mark at issue lacks distinctive character is based on the allegation that term ‘cinkciarz’ is ‘commonly used in the context of the supply of services relating to currency exchange outside official channels’, it should be noted that it has been held, in the response to the first plea in law, that that allegation is not established in as far as it assumes that that term may designate currency exchange activities in a neutral fashion, regardless of whether they are lawful or unlawful.
83On the contrary, having regard to the ordinary use of the term ‘cinkciarz’ in relation to an illegal and clandestine currency exchange activity, a use known to the relevant public, it must be acknowledged, as the Board of Appeal did, that that term has an allusive or suggestive character vis-à-vis lawful currency exchange services.
84Nevertheless, as has been held in paragraph 54 above, since an inherent characteristic of the term ‘cinkciarz’, namely that it designates illegal and clandestine activities, is entirely at odds with a characteristic of the currency exchange services at issue, namely their inherently lawful nature, the relevant public can make a link between the mark at issue and legal currency exchange services only by overcoming that contradiction to reach the conclusion that, ironically and relying on a mind game effect, that trade mark, contrary to its meaning, covers lawfully provided currency exchange services. It may be inferred that, with regard to those services, that term requires a measure of interpretation on the part of the public and, by virtue of that very fact, exhibits a certain originality and resonance which makes it easy to remember (see, by analogy, judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 59) and is capable of indicating to the consumer the commercial origin of the goods and services at issue. Accordingly, that term must be deemed to possess distinctive character as regards currency exchange services.
85Those considerations also apply in relation to the services at issue in Class 36 that are linked to currency exchange services, namely, in essence, banking and financial services.
86With regard to the other goods and services at issue, as the Board of Appeal found, the link between the meaning of the term ‘cinkciarz’ presented by the applicant, namely that relating to a clandestine and unlawful currency exchange activity, and those other goods and services, which are not directly linked to currency trading, is weak, if not non-existent. The mark at issue could therefore, at the very most, exhibit a very limited allusive nature in relation to some of those other goods and services, such that the applicant’s line of argument, which is essentially based on the descriptive character of that trade mark as regards currency exchange services and on the relationship purported to exist between those services and the other goods and services at issue, cannot succeed. Moreover, it may be observed that the considerations set out in paragraph 84 above are equally valid, in essence, in respect of the other goods and services at issue, having regard to the general meaning of the term, which describes a person engaging in any activity whatsoever deemed to be unlawful, fraudulent or dishonest. The exact opposite meaning, namely the use of that term to designate lawful goods or services, creates a surprise effect and requires some thought, from which a degree of distinctiveness arises.
87Accordingly, the third plea in law must also be rejected as unfounded and, therefore, the action must be dismissed in its entirety.
Costs
88Under 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.
89Since the applicant has been unsuccessful, it must be ordered to pay the costs of EUIPO and of the intervener, in accordance with the forms of order sought by them.
Operative part
On those grounds,THE GENERAL COURT (First Chamber)hereby:
1.Dismisses the action;
2.Orders Currency One S.A. to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and Cinkciarz.pl sp. z o.o.
Delivered in open court in Luxembourg on 19 December 2019.
Source: EUR-Lex, © European Union, 1998-2026. Reuse authorised under Decision 2011/833/EU.