28 March 2019 (*1)

(EU trade mark — Applications for EU figurative marks Simply.Connected. — Absolute ground for refusal — Lack of distinctive character — Scope of the examination to be carried out by the Board of Appeal — Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001)) — Article 64 of Regulation (EC) No 207/2009 (now Article 71 of Regulation 2017/1001)

In Cases T‑251/17 and T‑252/17,

Robert Bosch GmbH, established in Stuttgart (Germany), represented by S. Völker and M. Pemsel, lawyers,

applicant,

European Union Intellectual Property Office (EUIPO), represented by V. Mensing and D. Hanf, acting as Agents,

defendant,

ACTIONS brought against the decisions of the Fifth Board of Appeal of EUIPO of 9 March 2017 (Case R 948/2016-5) and 10 March 2017 (Case R 947/2016-5), concerning applications for registration of the figurative signs Simply.Connected. as EU trade marks,

THE GENERAL COURT (Third Chamber, Extended Composition),

composed of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz, I.S. Forrester, N. Półtorak and E. Perillo, Judges,

Registrar: E. Coulon,

having regard to the applications lodged at the Court Registry on 28 April 2017,

having regard to the responses lodged at the Court Registry on 13 July 2017,

having regard to the measures of organisation of procedure of 26 September 2018,

having regard to the fact that the matters have been assigned to the Third Chamber, Extended Composition, of the Court,

having regard to the decision of 17 January 2019 joining the present cases,

having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks of service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Background to the disputes

On 19 November 2015, the applicant, Robert Bosch GmbH, filed two applications for registration of EU trade marks 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)).

The first mark in respect of which registration was sought (‘the first mark applied for’, Case T‑251/17) is the following figurative sign:

3.3

The second mark in respect of which registration was sought (‘the second mark applied for’, Case T‑252/17) is the following figurative sign:

The goods and services in respect of which the two registrations were sought are identical. They are in Classes 7, 9, 11, 12, 36 to 38, 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, to the following description:

Class 7: ‘Electric engines (other than for land vehicles), starters (other than for land vehicles), generators, ignition systems for internal combustion engines, glow plugs, sparking-plugs, lambda probes, igniting distributors, ignition coils, magnetos, spark plug connectors, injection pumps, fuel pumps, engine speed governors, injectors and nozzle carriers; valves for machines; fuel filters, oil filters, air filters; hydraulic pumps, hydraulic motors, hydraulic valves, hydraulic cylinders, hydraulic reservoirs, hydraulic filters; pneumatic valves, power steering, air brakes, pneumatic devices, namely pneumatic compressors, compressed air reservoirs, control valves, brake valves; exhaust‑gas turbo-chargers; electronic control devices for production technology, resistance welding systems, servo drives and drive spindles, robot controllers; modular elements for use in automatic assembly/manufacturing engineering, including workstation equipment, namely work tables and work benches, machine mounting plates, safety and protection devices, swivel workstations, lifting devices, table presses, material delivery and sequencing systems, namely assembly lines and conveying chains, vibrating conveyors, tilt mechanisms and programmable electric devices, including grabs and swan-neck robots; burring machines (mechanical, thermal and electrochemical); packing machines; electric power tools and plug-in tools therefor; electric kitchen machines, and accessories therefor; washing machines for crockery, washing apparatus, radio frequency generators; igniting devices for internal combustion engines; parts and accessories for the aforesaid goods, included in class 7’;

Class 9: ‘Sensors; programmable controllers; electric and electronic measuring, checking (supervision) and control apparatus for installing in motor vehicles; apparatus for the recording, processing, sending, receiving and display of signals, data, images and sounds, electric and electromagnetic data carriers; video cameras, monitors, loudspeakers, antennas for radios and television receivers, telephones, car aerials, portable radiotelephones, car telephones; alarm systems; locating and navigation equipment for installation in land, air and water vehicles; electric power units, electric filters, semi-conductor components, optoelectronic components; printed, engraved and potted circuits, integrated circuits, relays, fuses, cables for electric, electronic and optical signals, cable linkages, electric switches, electronic beam adjusters, sensors, detectors, switchgear/switchboxes, solar cells and solar generators; analysis apparatus for automobiles, namely analysis of exhaust gases, soot particles, brake function, diagnostic instruments and simulation devices, test apparatus for engines and motors, workshop test instruments for injection pumps, starter motors and generators; batteries, chargers, battery testers, amplifiers, transformers, cable drums; computerised driving dynamics regulation systems; parts and accessories for the aforementioned goods’;

Class 11: ‘Heating, cooking, grilling, warming and refrigerating apparatus; gas lighters; included in class 11; headlamps and lights, including for vehicles; refrigerating apparatus and machines; ventilating installations; hair driers (dryers); electric coffee brewers; roasters; baking ovens; electric egg cookers; toasters; air conditioning installations; control and regulating apparatus for gas heaters; clothes dryers; parts and fittings for the aforesaid goods in class 11’;

Class 12: ‘Restraints for fitting in motor vehicles, namely belt tighteners, airbags; windscreen defrosting systems; servo brakes and air brakes for land and air vehicles, antilock brake systems; traction control systems; gear controls; windscreen wipers; hydraulic steering mechanisms for land, air and water vehicles; motors, electric, for land vehicles; and parts and fittings, all included in class 12 for the aforesaid goods’;

Class 36: ‘Insurance services’;

Class 37: ‘Installation, maintenance and commissioning of parts and accessories of motor vehicles, car radio systems, radio telephones, power hand tools, workshop appliances and devices, power generators, of household and kitchen appliances, radio and television systems, sanitary devices, heating and air-conditioning systems and furniture; repair and maintenance of motor vehicles at motor sports events’;

Class 38: ‘Broadcast service, transmission of sound, data and images via satellites’;

Class 41: ‘Training and instruction of third parties in electrical engineering and electronics’;

Class 42: ‘Construction and design planning and consultancy; creation and installation of programs for data processing; conducting development initiatives, testing and research; technical consultancy and providing of expertise; planning, development and technical testing of space projects; technical monitoring of buildings and installations’.

By letters of 16 March 2016, the EUIPO examiner informed the applicant that the two marks applied for were partly caught by the absolute grounds for refusal laid down in Article 7(1)(b), (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b), (c) and (2) of Regulation 2017/1001).

By letters of 18 April 2016, the applicant submitted its observations.

By decisions of 25 April 2016, the examiner refused, on the basis of Article 7(1)(b), (c) and (2) of Regulation No 207/2009, to register the two marks applied for in respect of the goods and services covered by those marks in Classes 9, 37, 38 and 41 and the services of ‘creation and installation of programs for data processing’ and ‘technical consultancy’ in Class 42.

By contrast, no objection was raised to the goods and services covered by the applications for registration that fell in Classes 7, 11, 12 and 36 and the services of ‘construction and design planning and consultancy’, ‘conducting development initiatives, testing and research’, ‘providing of expertise’, ‘planning, development and technical testing of space projects’, or ‘technical monitoring of buildings and installations’ that fell in Class 42.

On 23 May 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against each of the examiner’s two decisions.

By decisions of 9 March 2017 (case R 948/2016-5, concerning the first trade mark applied for, ‘the first contested decision’) and 10 March 2017 (case R 947/2016-5, concerning the second mark applied for, ‘the second contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeals on identical grounds.

11.11

First, the Board of Appeal took the view that the word elements comprising the marks applied for would be understood as a slogan devoid of distinctive character which meant ‘just connected’ or ‘above all connected’ to a network. In that regard, the Board of Appeal found that the relevant public would not attach any significance to the full stops at the end of each word element since consumers tended to perceive sequences of letters in a manner that seemed sensible to them regardless of punctuation and use of upper- or lower-case letters. Similarly, neither the rounded rectangle without a top right-hand corner which surrounded the word elements nor the familiar symbol for a wireless connection (consisting of the representation of three concentric waves) conferred on the signs at issue a distinctive character since, being customary in the context of the goods and services at issue, they would not be perceived consciously (paragraphs 17 to 19 of the contested decisions). In those circumstances, the signs at issue could not be perceived as indications of the commercial origin of the goods and services covered by the applications for registration (paragraph 20 of the contested decisions).

12.12

Second, the Board of Appeal, taking into account almost all of the goods and services referred to in paragraph 4 above and having grouped them into categories, found that consumers would expect, as the case might be, either a normal connection to a network or the interconnection of the goods through the ‘Internet of Things’, and that the goods and services in question were all directly related to the provision of such wireless connections (paragraphs 25 and 26 of the contested decisions). The signs at issue would therefore be perceived as a laudatory indication of an abstract quality of the goods and services covered by the applications for registration (paragraph 27 of the contested decisions).

Forms of order sought

13.13

The applicant claims that the Court should:

annul the two contested decisions;

order EUIPO to pay the costs, including those incurred in the appeal proceedings.

14.14

EUIPO contends that the Court should:

dismiss the actions;

order the applicant to pay the costs of the two cases.

Law

15.15

In support of each of the two actions, which are presented in identical terms, the applicant relies on three pleas in law. The first alleges infringement of the combined provisions of Article 64 of Regulation No 207/2009 and Article 263 TFEU. The second alleges infringement of Article 7(1)(b) of Regulation No 207/2009. By the third plea, the applicant submits that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009.

The first plea in law, alleging infringement of the combined provisions of Article 64 of Regulation No 207/2009 and Article 263 TFEU

16.16

The applicant submits that the Board of Appeal examined the goods and services in Classes 7, 11, 12 and 36 and those in Class 42 other than the services of creation and installation of programs for data processing and technical consultancy. However, the examiner did not object to the registration of those goods and services. In so doing, the Board of Appeal exceeded the limits of its jurisdiction and, to that extent, the contested decisions should be annulled (judgment of 18 November 2014, Lumene v OHIM(THE YOUTH EXPERTS), T‑484/13, not published, EU:T:2014:963).

EUIPO disputes that line of argument.

First, it must be stated at the outset that, as EUIPO correctly submits, Article 263 TFEU is not applicable to appeals before the Boards of Appeal and that, consequently, in so far as it is based on infringement of that provision, the first plea must be rejected as ineffective.

Second, as the applicant states, and in contrast to the claims of the appellant before the Board of Appeal in the case that led to the judgment of 18 November 2014, THE YOUTH EXPERTS (T‑484/13, not published, EU:T:2014:963), the applicant asked the Board of Appeal to set aside the examiner’s decisions only in so far as they adversely affected it.

It is not disputed that, in the contested decisions, the Board of Appeal examined the distinctive character of the marks applied for in respect of goods and services to which the examiner had not objected.

As stated in paragraph 7 above, the examiner refused to register the two marks applied for in respect of the goods and services concerned in Classes 9, 37, 38 and 41 and in respect of the services of ‘creation and installation of programs for data processing’ and ‘technical consultancy’ in Class 42. It follows that the marks applied for may be registered in respect of the other goods and services listed in paragraph 4 above, namely those in Classes 7, 11, 12 and 36 and the services of ‘construction and design planning and consultancy’, ‘conducting development initiatives, testing and research’, ‘providing of expertise’, ‘planning, development and technical testing of space projects’ and ‘technical monitoring of buildings and installations’ in Class 42 (see paragraph 8 above).

However, some of those goods and services which were not in issue were nevertheless examined by the Board of Appeal in the contested decisions and were grouped into categories (a), (f), (g), (h), (i) and (j) established by the Board in paragraphs 23 and 24 of the contested decisions. In paragraphs 26 and 27 of the contested decisions, the Board found that the marks applied for were likewise devoid of any distinctive character in respect of the goods and services in categories (a), (f), (g), (h), (i) and (j) which were established in the contested decisions and included goods and services that were not in issue.

It is therefore common ground that the Board of Appeal examined goods and services to whose registration the examiner had not objected and which the appeals before it did not concern. Although the parties agree that the Board was not entitled to carry out such an examination, they disagree about the implications.

According to the applicant, which relies on the judgment of 18 November 2014, THE YOUTH EXPERTS (T‑484/13, not published, EU:T:2014:96), it should be found that, in examining the goods and services to which the examiner had not raised any objection, the Board of Appeal exceeded its jurisdiction and vitiated the contested decisions, which should be annulled to that extent.

In EUIPO’s view, however, the examination by the Board of Appeal of the distinctive character of the marks applied for in respect of goods and services that were not in issue did not enlarge the scope of the appeals. The considerations concerning those goods and services should therefore be regarded as utterly superfluous and consequently as having no bearing on the legality of the contested decisions, and so the first plea should be rejected.

First, it should be observed that the operative part of the contested decisions simply dismisses the appeals brought before the Board of Appeal. However, as has been pointed out in paragraph 19 above, the applicant’s appeals before the Board related only to the goods and services in respect of which the examiner objected to the registration of the marks applied for.

Second, clearly, under Article 64(1) of Regulation No 207/2009, following the examination on the merits of the appeal, the Board of Appeal is to decide thereon and may, in doing so, exercise any power within the competence of the department which was responsible for the decision appealed against. It follows from that provision that, through the effect of the appeal against an examiner’s decision refusing registration, the Board of Appeal may carry out a new, full examination of the merits of the application for registration, in terms of both law and fact, which is to say, in the present case, itself decide on the application for registration by either rejecting it or declaring it to be founded, thereby either upholding or reversing the decision appealed against (judgment of 3 July 2013, Airbus v OHIM(NEO), T‑236/12, EU:T:2013:343, paragraph 21; see also, by analogy, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraphs 56 and 57).

That power to carry out a new, full examination of the merits of the application for registration, in terms of both law and fact, is, however, conditional on the admissibility of the appeal before the Board of Appeal (judgment of 3 July 2013, NEO, T‑236/12, EU:T:2013:343, paragraph 22; see also, by analogy, order of 2 March 2011, Claro v OHIM, C‑349/10 P, not published, EU:C:2011:105, paragraph 44).

In that regard, the first sentence of Article 59 of Regulation No 207/2009 states that ‘any party to proceedings adversely affected by a decision may appeal’. It follows from that provision that, as the applicant did in this case, parties to proceedings before EUIPO may appeal to the Board of Appeal against a decision taken by a lower department of EUIPO only in so far as that decision has rejected their claims or applications. In so far as the decision of the lower department of EUIPO has, on the contrary, upheld the claims of a party, that party does not have standing to appeal to the Board of Appeal (judgment of 3 July 2013, NEO, T‑236/12, EU:T:2013:343, paragraph 23; see also, to that effect, judgment of 14 December 2011, Völkl v OHIM — Marker Völkl(VÖLKL), T‑504/09, EU:T:2011:739, paragraph 55 and the case-law cited).

It is clear from the first sentence of Article 59 of Regulation No 207/2009 that, where, as in the present case, the examiner has rejected an application for registration of an EU trade mark only in respect of a part of the goods and services covered by that application, while allowing registration in respect of a part of the goods and services covered by it, the appeal brought by the applicant for the trade mark before the Board of Appeal can lawfully relate only to the goods and services concerned by the examiner’s refusal to allow registration.

However, in the present case, as has been pointed out in, inter alia, paragraphs 19 and 26 above, the applicant filed appeals with the Board of Appeal seeking annulment of the examiner’s decisions to the extent that its applications for registration had been rejected. The Board was therefore wrong, in the contested decisions, to examine the applicability in the present case of Article 7(1)(b) of Regulation No 207/2009 in respect of goods and services to which the examiner had not raised any objection. Under the case-law cited in paragraph 28 above, the Board of Appeal has no discretion to extend the scope of an appeal to matters that the appellant would not have standing to put before it.

Nevertheless, it is clear from the operative part of the contested decisions that, in the present case, the Board of Appeal merely dismissed the appeals (see paragraph 26 above). Under Article 58 of Regulation No 207/2009, such rejection has only the effect of rendering the examiner’s decisions enforceable, subject to proceedings being brought as provided for in Article 64(3) of Regulation No 207/2009.

Moreover, when questioned on that point in relation to a measure of organisation of procedure, EUIPO confirmed that the fact that the Board of Appeal took account of goods and services to which the examiner had not objected did not, per se, have any bearing on the applicant’s rights to register the marks applied for in respect of those goods and services. According to EUIPO, those rights could be called into question only if the examiner, of his own motion, resumed the examination of absolute grounds for refusal which could prevent the registration of the marks applied for on points he had not previously raised. The examiner would then be impelled to take new decisions against which separate appeals from those at issue in the present proceedings could be brought before the Boards of Appeal.

It follows that the considerations in the contested decisions which relate to the examination of goods and services to which the examiner had raised no objection go beyond the scope of the appeals which had been duly brought before the Board of Appeal, and accordingly, those considerations have no bearing whatsoever on either the scope or effects of the contested decisions. Consequently, it must be held that those considerations are not in the nature of a decision and their annulment would be of no consequence.

The first ground of appeal must therefore be rejected as ineffective.

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

By its second plea, the applicant claims that, in the contested decisions, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009.

The contested decisions

The reasons for the finding by the Board of Appeal that the marks applied for were devoid of any distinctive character in respect of the goods and services at issue are set out in paragraphs 14 to 30 of the contested decisions.

In particular, in paragraphs 14 and 15 of the contested decisions, the Board of Appeal found that the goods and services at issue were directed both at the general public, whose level of attention is average, and at traders, and only peripherally at fitters and a specialist public, whose level of attention is generally higher. However, even the level of attention paid by well-informed consumers could be relatively low when it came to promotional indications which do not appear decisive. The same applies to the level of attention paid by the average consumer to a message which he perceives as promotional.

In paragraphs 17 and 19 of the contested decisions, the Board of Appeal accepted the meaning of the word elements making up the signs at issue determined by the examiner. Thus, the word element ‘simply’ was correctly understood as meaning ‘just’, and the word element ‘connected’ as meaning ‘connected’. The word elements in the marks applied for, Simply.Connected., therefore constitute a slogan meaning ‘just connected’. Neither the full stop after each of the two word elements nor the figurative elements, namely the frame with its open top right‑hand corner and the familiar symbol of a wireless connection to a network, confer a different meaning on the signs in question. Those figurative elements are thus customary and non-distinctive.

In paragraph 18 of the contested decisions, the Board of Appeal rejected the applicant’s argument that the superposing of the word elements and the fact that both of them begin with a capital letter and are followed by a full stop should lead to their being considered separately.

In paragraph 20 of the contested decisions, the Board of Appeal stated that the marks applied for, taken in their entirety, expressed the idea that the goods and services at issue were ‘especially’ or ‘above all’‘connected’ to a network, the direct message conveyed by the word elements being further corroborated by the presence of the figurative symbol of a wireless connection. The signs at issue would thus be perceived as a slogan describing a desirable characteristic of the goods and services at issue and not as an indication of their commercial origin. According to the Board of Appeal, the message conveyed is simple, easily understandable and grammatically correct and is as commonplace as the figurative elements making up the signs.

In paragraphs 22 to 24 of the contested decisions, the Board of Appeal considered that it needed to ascertain whether, from the point of view of the relevant public, there was a sufficiently direct and specific relationship between the signs at issue and the goods and services at issue. To that end, the Board of Appeal grouped those goods and services into categories. It divided the goods at issue in Class 9 into three distinct categories: category (c) ‘Apparatus and parts for the recording, processing, sending, receiving and display of signals, data, images and sounds’; category (d) ‘Measuring, checking (supervision) and control apparatus; analysis apparatus’; and category (e) ‘Goods that serve for power supply’. Next, it divided the services in Class 37 into two categories: category (k) ‘Installation, maintenance and commissioning of parts and accessories for various goods’ and category (l) Repair and maintenance of motor vehicles at motor sports events’. It further took the view that the services at issue in Classes 38 and 41 were each in a separate category for each class: category (m) ‘Broadcast service, transmission of sound, data and images via satellites’ and category (n) ‘Training and instruction of third parties in electrical engineering and electronics’. Lastly, it found that the contested services in Class 42 should be divided into two categories: category (o) ‘Creation and installation of programs for data processing’ and category (p) ‘Technical consultancy’.

In paragraph 25 of the contested decisions, the Board of Appeal found, for all categories, that the concept of connection should be assessed by reference to the concept of ‘Internet of Things’, referring to the interconnection of physical objects in a network comparable to the Internet, so as to allow them to be controlled at a distance or to make them capable of communicating and exchanging information. The aim of the Internet of Things was to minimise the information gap between the real and virtual worlds. In that regard, being connected was a desirable characteristic for those goods and services.

In paragraph 26 of the contested decisions, the Board of Appeal found, for the goods grouped in categories (c), (d) and (e), that the marks applied for would inform consumers that those goods, which included parts and accessories of other goods, ‘especially’ or ‘above all’ served the purpose of connecting to a network. The same applied to the services in the categories (m), (o) and (p). Purchasers of the services in category (k) would understand the signs at issue to mean that those services concerned the construction, maintenance and commissioning of goods that were especially connected to a network. Services in category (l) could also be performed using a connection to a network, for example if any failures were communicated to the workshop in order to allow it to provide the parts needed for the repair. Finally, the services in category (n) clearly related to the electrical engineering and electronics requirements and procedures for connecting to a network.

In paragraph 27 of the contested decisions, the Board of Appeal inferred from its previous findings that, in the mind of the relevant public, the connection between the goods and services covered by the marks applied for and the content of the slogan constituted by the signs at issue was clear and required no further mental steps. The signs at issue would be perceived by the relevant English-speaking public in the European Union as a laudatory indication of the abstract characteristics of the goods and services covered by the applications for registration.

The principles relating to the application of Article 7(1)(b) of Regulation No 207/2009

Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered.

To possess distinctive character for the purposes of Article 7(l)(b) of Regulation No 207/2009, a trade mark must serve to identify the goods or services in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish the goods or services from those of other undertakings (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34, and of 15 May 2014, Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 50).

In that respect, it must be recalled that signs devoid of any distinctive character are deemed incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or service designated by the mark, thus enabling the consumer who acquires the goods or service to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 27 February 2002, REWE-Zentral v OHIM(LITE), T‑79/00, EU:T:2002:42, paragraph 26, and of 20 November 2002, Bosch v OHIM(Kit Pro and Kit Super Pro), T‑79/01 and T‑86/01, EU:T:2002:279, paragraph 19).

The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35; of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25; and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43).

The examination of absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. However, the competent authority may use only general reasoning for all of the goods or services concerned where the same ground of refusal is given for a category or group of goods or services. That 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 order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraphs 37 to 40 and the case-law cited).

Examination of the applicant’s claims

At the outset, the definition of the relevant public adopted by the Board of Appeal (see paragraph 38 above) — which is not disputed by the applicant in any case — must be confirmed.

The claims advanced by the applicant in support of the second plea are divided into five parts. The first part alleges an incorrect determination of the content of the word elements of the marks applied for. The second part alleges that the link between the word elements of the marks applied for is linguistically unusual. By the third part, the applicant submits that there is not a sufficiently direct link between the signs applied for and the goods and services at issue. The fourth part alleges the existence of unusual linguistic changes. Lastly, the fifth plea alleges an error in the overall assessment of the signs applied for.

– The first part, alleging an incorrect determination of the content of the word elements of the marks applied for

The applicant admits that the term ‘simply’ can be understood as ‘just, simply’ and the word ‘connected’ as referring to a ‘connection to a network’. By contrast, the Board of Appeal wrongly considered that the overall message conveyed by the signs applied for meant ‘just connected’ or ‘above all connected’. The Board of Appeal disregarded the superposing of the two words and the presence of a full stop after each of them. Those typographical characteristics mean that the word elements of the signs applied for must not be seen as expressing a single message consisting of two words but as two distinct, separate words: first, ‘simply’ and second, ‘connected’.

The applicant submits that in that regard, the Board of Appeal was wrong to refer to the judgment of 15 September 2005, BioID v OHIM (C‑37/03 P, EU:C:2005:547). The sign examined in that judgment, BioID®, was followed by a full stop placed after all the word elements, with the result that the Court held, in that case, that that full stop did not constitute, per se, an indication of the commercial origin of the goods and services covered by that mark. In the present case, the applicant does not claim that the full stops placed after each of the word elements constitute, per se, an indicator of commercial origin, but does submit that those full stops, and the superposing of the two words, influence the perception of the word elements.

Similarly, the applicant considers that the case-law to which the Board of Appeal referred in paragraph 18 of the contested decisions is irrelevant to the present case. In those judgments (judgments of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46; of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle(ATURION), T‑146/06, not published, EU:T:2008:33; and of 6 September 2013, Eurocool Logistik v OHIM — Lenger(EUROCOOL), T‑599/10, not published, EU:T:2013:399), the General Court ruled on how the relevant public would break down word signs which suggested a specific meaning to it or resembled words with which it was familiar. However, in the present case, the word elements are separated by their relative position and by punctuation.

Finally, the omission of elements contained in the marks applied for, such as, in the present case, the full stops that follow each word element and the fact that the two word elements are positioned on different lines infringes the rule of law that a trade mark must be considered in the form in which registration was sought (judgment of 14 May 2013, Unister v OHIM(fluege.de), T‑244/12, EU:T:2013:243).

For all those reasons, the applicant is of the opinion that the Board of Appeal was incorrect to consider that the word elements of the marks applied for conveyed a single message.

EUIPO disputes that line of argument.

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