T-805/14

ORDER OF THE GENERAL COURT (Ninth Chamber) 25 May 2016 (*) (European Union trade mark — Application for a European Union word mark MEGABUS.COM — Absolute grounds for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Descriptive character — Article 7(1)(c) of Regulation No 207/2009 — Article 7(3) of Regulation No 207/2009 — Article 75 of Regulation No 207/2009 — Action manifestly inadmissible and manifestly lacking any foundation in law) In Case T‑805/14, Stagecoach Group plc, established in Perth (United Kingdom), represented by G. Jacobs, lawyer, applicant, v European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent, defendant, ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 7 October 2014 (Case R 1894/2013-4) concerning an application for registration of the word sign MEGABUS.COM as a European Union trade mark, THE GENERAL COURT (Ninth Chamber), composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges, Registrar: E. Coulon, having regard to the application lodged at the Court Registry on 9 December 2014, having regard to the response lodged at the Court Registry on 30 March 2015, makes the following Order  Background to the dispute 1        On 21 August 2012, the applicant, Stagecoach Group plc, filed an application for registration of a European Union 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). 2        Registration as a mark was sought for the word sign MEGABUS.COM. 3        The goods and services in respect of which registration was sought are in, inter alia, Classes 16, 35 and 39 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description: –        Class 16: ‘Printed matter and printed publications; tickets; maps; timetables; vouchers; brochures; booklets; leaflets; directories; diaries, posters, manuals, magazines, newspapers; photographs, postcards, prints; calendars; instructional and teaching materials (not apparatus); tourist guides; luggage tags of paper; labels’; –        Class 35: ‘Advertising services, promotional services, rental of advertising space; advertising and promotion services associated with transport services, travel and tourism; organisation and supervision of sales and promotional incentive schemes’; –        Class 39: ‘Transport services; transportation of persons; transportation of passengers by bus and coach; information services relating to travel; provision of information including timetables, fares, schedules, interchanges of connecting transport and tourist information services; provision of information relating to travel and transport including such services provided online from a computer database, the Internet or other global computer network systems and/or by SMS text or email messaging; services for the booking of travel; issuance of travel tickets; provision and arrangement of travel and tours; travel agency services; services for the arrangement of transport of groups of people, individuals, families and associated luggage and goods; provision of sightseeing tours; escorting of passengers; ticket booking agency services; seat reservation services; timetable, schedule and fare enquiry services; vehicle hire; consultancy, advisory and information services relating to passenger transportation services, transport infrastructure and integrated transport systems; operation and management of transport infrastructure systems; retail services connected to the sale of tickets for travel; information and advisory services relating to any of the aforesaid services’. 4        By decision of 2 August 2013, the examiner rejected the application for registration of the mark applied for, in respect of all the goods and services in question, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009. 5        On 26 September 2013 the applicant filed a notice of appeal with EUIPO against that decision. 6        By decision of 7 October 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal found that the mark applied for was descriptive of the goods and services in question within the meaning of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, and that it was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation. Furthermore, it took the view that distinctive character acquired through use, within the meaning of Article 7(3) of Regulation No 207/2009, had not been proved in so far as concerns the parts of the European Union in which the ground for refusal existed.  Forms of order sought 7        The applicant claims that the Court should: –        annul the contested decision; –        order that the European Union trade mark MEGABUS.COM be registered for all of the goods and services, or partially registered for some of those goods and services; –        in the alternative, order that the European Union trade mark MEGABUS.COM be registered at least partially in respect of ‘provision of passenger transport services’ for which evidence of acquired distinctiveness has been shown; –        order EUIPO to pay the costs. 8        EUIPO contends that the Court should: –        dismiss the action; –        order the applicant to pay the costs.  Law 9        In support of its action, the applicant relies, in essence, on four pleas in law, alleging: (i) infringement of Article 7(1)(c) of Regulation No 207/2009; (ii) infringement of Article 7(1)(b) of that regulation; (iii) infringement of Article 75 of that regulation; and (iv) infringement of Article 7(3) of that regulation. 10      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. 11      In the present case, the Court considers that the case-file provides sufficient information and decides, in accordance with that article, to give a decision on the action without taking further steps in the proceedings.  Admissibility  Admissibility of the applicant’s second and third heads of claim 12      EUIPO disputes the admissibility of the second and third heads of claim relied on by the applicant, which seek, in essence, a finding by the Court that the mark applied for may be registered. 13      In the present case, such heads of claim must be interpreted as constituting a request that directions be issued to EUIPO to register that mark. 14      It is, however, clear from settled case-law that, in an action brought before the European Union Courts against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgment handed down by the European Union Courts. Accordingly, it is not for the General Court to issue directions to EUIPO; rather, it is for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the European Union Courts (see, by analogy, judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited). 15      Accordingly, the applicant’s second and third heads of claim, by which it seeks to have the Court order EUIPO to grant the application for registration, are inadmissible.  Admissibility of the second, third and fourth pleas in law 16      It must be recalled, first of all, that the conditions for the admissibility of an action concern an absolute bar to proceeding with the action which the European Union Courts must consider of their own motion should such an issue arise (see judgment of 8 February 2011 in Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 28 and the case-law cited). Moreover, it must be recalled that, under Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991, which applies to intellectual-property matters by virtue of Articles 130(1) and 132(1) of those rules, an application must state the subject matter of the proceedings and a summary of the pleas in law on which that application is based. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if appropriate, without other information in support (see judgment of 27 September 2005 in Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 26 and the case-law cited). In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, even if only stated briefly, provided that the statement is coherent and comprehensible (judgment of 14 May 1998 in Enso Española v Commission, T‑348/94, EU:T:1998:102, paragraph 143). If specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the lack of essential information in the application itself, even if those documents are attached to the application (see, to that effect, order of 29 November 1993 in Koelman v Commission, T‑56/92, EU:T:1993:105, paragraph 21). 17      Furthermore, the application must specify the grounds on which the action is based. Accordingly, a mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure (see judgment of 12 December 2002 in eCopy v OHIM (ECOPY), T‑247/01, EU:T:2002:319, paragraph 15 and the case-law cited). Finally, the applicant and its lawyer must set out the factual and legal grounds on which the action is based and it is not for the Court to do their work by trying to locate and identify in the numerous annexes to which the application makes general reference the information which may support the claims for compensation formulated in the application (see, to that effect, order of 29 November 1993 in Koelman v Commission, T‑56/92, EU:T:1993:105, paragraph 23). 18      In the present case, under the heading ‘Grounds for appeal’, the applicant sets out the pleas in law and infringements relied on in support of its action. 19      The application features, under the heading ‘Background’, the only arguments put forward by the applicant in support of the alleged infringements. The Court considers, however, that most of those arguments fail to meet the minimum requirements laid down in Article 44(1)(c) of the Rules of Procedure of 2 May 1991 in relation to the conditions governing the admissibility of an action on the ground that they are not sufficiently clear and consistent to substantiate those infringements or for the Court to assess their merits. 20      Most of the applicant’s claims are confused or lacking in explanation as regards the infringement of the provisions relied on in the present case. The Court notes in particular that, although the second, third and fourth pleas in law refer expressly to infringement of Article 7(1)(b) of Regulation No 207/2009, Article 7(3) of that regulation and, finally, Article 75 of that regulation, the application contains no clear and consistent substantiated argument demonstrating how the Board of Appeal might have infringed those provisions. 21       In those circumstances, the Court considers that the second, third and fourth pleas in law raised by the applicant must be rejected as being manifestly inadmissible on the ground that they are devoid of clarity and consistency and that, consequently, they do not meet the minimum requirements of Article 44(1)(c) of the Rules of Procedure of 2 May 1991. 22      All that remains therefore is to examine the first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009  Substance 23      The applicant claims that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 by finding that the mark MEGABUS.COM was directly descriptive of the goods and services in question. 24      Even if it were necessary to consider that the arguments put forward by the applicant in support of that plea in law could be deemed to have been submitted in a form that meets the minimum requirements of admissibility, it must be held that, in any event, that plea in law must be rejected as being manifestly devoid of any basis in law. 25      Article 7(1)(c) of Regulation No 207/2009 provides that 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 service, may not be registered. In addition, Article 7(2) of Regulation No 207/2009 states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. 26      The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (judgments of 20 September 2001 in Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39, and of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 24). 27      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the category of goods and services in question or of one of their characteristics (judgments of 22 June 2005 in PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 25, and of 22 May 2008 in Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published, EU:T:2008:165, paragraph 29). 28      According to case-law, a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. This assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgments of 22 June 2005 in PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 27, and of 22 May 2008 in RadioCom, T‑254/06, not published, EU:T:2008:165, paragraph 31). 29      It must also be recalled that the sign’s descriptiveness may only be assessed, first, in relation to the goods or services concerned and, secondly, in relation to the perception of the target public, which is composed of the consumers of those goods or services (judgments of 27 February 2002 in Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 22 May 2008 in RadioCom, T‑254/06, not published, EU:T:2008:165, paragraph 33). 30      In the present case, the Board of Appeal was correct in finding that the goods and services in question were aimed at the general public and at a professional public, the latter having a higher level of attention owing to its expertise in the travel and transport sector. Furthermore, the Board of Appeal stated correctly in paragraph 24 of the contested decision that, since the mark applied for was composed of the words ‘mega’ and ‘bus’, which are part of a basic English vocabulary and exist in other languages of the European Union, the relevant public comprised average and professional English-, Spanish-, German-, French-, and Dutch-speaking consumers of the European Union, a fact which the applicant, moreover, has not disputed. 31      As regards the meaning of the mark applied for, the Board of Appeal considered, in paragraph 31 of the contested decision, that the word ‘mega’ meant ‘very large, great, excellent’, that the word ‘bus’ designated a ‘large motor vehicle carrying passengers by road’ and that those two words, which are part of basic English vocabulary and exist in other languages of the European Union, would be immediately perceived by the relevant public as a reference to a very large or excellent bus, a motor vehicle carrying passengers by road. Contrary to the applicant’s claim, there is nothing to support the view that the average English-speaking consumer would be aware of hyperbole and consequently would not consider a mark such as MEGABUS to be descriptive of passenger transport services. Furthermore, the Board of Appeal stressed that the element ‘.com’ was a common domain name denoting commercial entities, which was widely used and known throughout the entire European Union. It concluded correctly that that element would be recognised immediately by the relevant public as referring to a website. 32      It must therefore be noted that the sign ‘megabus.com’ is made up of combined elements, the meaning of which will be clearly and immediately perceived by the relevant public as indicating that the goods and services relate to a very large or excellent bus and that they are available or accessible via a website. The Board of Appeal was therefore correct in finding, in paragraphs 34 to 36 of the contested decision, that that sign would be immediately perceived by the relevant public as being directly descriptive of the services in Class 39 and as describing the subject matter and intended purpose of the goods in Class 16 and services in Class 35. It must be noted that the applicant has not put forward any argument to demonstrate that the findings of the Board of Appeal concerning the different goods and services are incorrect. 33      The Board of Appeal was therefore fully entitled to conclude that the mark applied for, MEGABUS.COM, was descriptive of the goods and services in question for the purposes of Article 7(1)(c) of Regulation No 207/2009. 34      It is clear that the applicant offers no argument capable of invalidating that conclusion. 35      As EUIPO notes in essence, the only argument put forward by the applicant to demonstrate that the mark applied for, MEGABUS.COM, is not descriptive of the goods and services in question is, in essence, that a mark which requires forty words to describe its descriptive character in respect of the goods and services in question cannot be directly descriptive of the kind or quality of those goods and services, as Article 7(1)(c) of Regulation No 207/2009 requires. 36      First, it must be noted that the Board of Appeal by no means used forty words to describe the meaning of the mark applied for. In paragraph 33 of the contested decision, it stated that that mark informs the consumers targeted that the goods or services in question relate to a huge or an excellent bus and that they are offered and are accessible through a website. Secondly, although it is claimed that the Board of Appeal used an excessive number of words to describe the meaning of the mark applied for, that, according to EUIPO, is entirely irrelevant. It is not the number of the words used to define the descriptiveness of a sign that makes, or does not make, that sign descriptive. The fact that the explanation of that meaning requires more than just a few words does not mean that such a meaning will not be grasped immediately, without further reflection, by the relevant public. 37      The first plea in law must therefore be rejected as being manifestly unfounded. 38      Having regard to all the foregoing, the action must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly lacking any foundation in law.  Costs 39      Article 134(1) of the Rules of Procedure provides that 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. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby orders: 1.      The action is dismissed as being in part manifestly inadmissible and in part manifestly lacking any foundation in law. 2.      Stagecoach Group plc shall pay the costs. Luxembourg, 25 May 2016. E. Coulon         G. Berardis Registrar        President * Language of the case: English.