Zhadanov v EUIPO (Scanner Pro) (EU trade mark - Judgment) [2019] EUECJ T-492/18 (24 September 2019)

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(EU trade mark — Application for the EU word mark Scanner Pro — Absolute ground for refusal — No distinctive character acquired through use — Article 7(3) of Regulation (EU) 2017/1001)

Igor Zhadanov, residing in Odessa (Ukraine), represented by P. Olson, lawyer,

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė, S. Palmero Cabezas and H. O’Neill, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 June 2018 (Case R 1812/2017-2), relating to an application for registration of the word sign Scanner Pro as an EU trade mark,

composed of D. Gratsias, President, I. Labucka and I. Ulloa Rubio (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 15 August 2018,

having regard to the decision of 15 January 2019, rejecting the application to join Cases T‑404/18 and T‑492/18 for the purposes of the oral part of the procedure and of the decision closing the proceedings,

1 On 18 January 2017, the applicant, Igor Zhadanov, 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)).

3 The goods and services in respect of which registration was sought are in Classes 9 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 9: ‘Computer software for scanning images and documents; Computer programmes for data processing; Computer programmes for image processing; Computer programs [downloadable software]; Software; Mobile software; Computer software; Downloadable software’;

4 By decision of 29 June 2017, the examiner refused registration of the mark applied for in respect of the goods and services referred to in paragraph 3 on the ground that the mark in question was devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001) and Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001). According to the examiner, in the perception of the relevant public, the mark applied for consists essentially of an expression that conveys obvious and direct information regarding the kind and quality of the goods and services in question. The examiner also found that it had not been proven that the mark had acquired distinctive character through use under Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001).

5 On 16 August 2017, the applicant filed a notice of appeal with EUIPO under Articles 58 to 60 of Regulation No 207/2009 against the examiner’s decision.

6 By decision of 6 June 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It found, in essence, that the mark applied for conveys obvious and direct information to both the English-speaking professional public and the English-speaking general public regarding the kind and quality of the goods and services in question. According to the Board of Appeal, the link between the words ‘Scanner Pro’ in the mark and the goods and services referred to in the application for registration is sufficiently close for the mark applied for to be found to be descriptive of the goods in question for the purposes of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001 and devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation. The Board of Appeal also rejected the claim that the mark applied for had acquired distinctive character through the use which had been made of it under Article 7(3) of Regulation 2017/1001, on the ground that the documents provided by the applicant did not prove that the relevant public perceives that mark as an indication of the commercial origin of the goods in question.

– register the mark applied for in respect of the goods and services covered by the trade mark application;

9 At the hearing, the applicant stated that his claims in relation to the Class 9 goods for which registration as a mark had been sought were confined to ‘software applications for smartphones and tablets’.

10 EUIPO argues that the applicant’s second head of claim is inadmissible inasmuch as he asks the Court to register the mark applied for.

11 In that regard, it must be pointed out that under Article 72(3) of Regulation 2017/1001, the General Court has jurisdiction only to annul or alter decisions of the Board of Appeal. Yet, in his second head of claim, the applicant seeks registration of the mark applied for. Therefore, the applicant’s second head of claim must be rejected (see, to that effect, judgment of 1 July 2014, You-View.tv v OHIM — YouView TV (YouView+), T‑480/13, not published, EU:T:2014:591, paragraph 15 and the case-law cited).

The admissibility of the restriction of the Class 9 goods to ‘software applications for smartphones and tablets’

12 At the hearing, the applicant stated that his claims as regards the Class 9 goods for which registration as a mark was sought were restricted to ‘software applications for smartphones and tablets’.

13 The applicant’s request referred to in paragraph 12 above, as submitted at the hearing, to confine the application for annulment of the contested decision to a category of goods not mentioned in the application initiating proceedings, must be held to constitute a new claim, which modifies the subject matter of the proceedings before the Court for the purposes of Article 177(1)(d) of the Rules of Procedure and is therefore inadmissible. Since that head of claim has been rejected on that ground, the Court must examine whether the action is well founded with reference only to the claims contained in the application initiating proceedings.

14 In any case, a restriction, within the meaning of Article 49(1) of Regulation 2017/1001, to the list of goods or services contained in an EU trade mark application, introduced after the adoption of the decision of the Board of Appeal challenged before the Court cannot affect the legality of that decision, which is the only decision being challenged before the Court (see judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 25 and the case-law cited).

15 However, a statement by the trade mark applicant subsequent to the decision of the Board of Appeal, in which he withdraws his application in respect of some of the goods covered by the initial application, may be interpreted as a statement that the contested decision is being challenged only in so far as it covers the remainder of the goods concerned or as a partial withdrawal, where that statement is made at an advanced stage of the proceedings before the Court and does not change the subject matter of the proceedings. Accordingly, such a restriction must be taken into account by the Court, inasmuch as it is being asked to review the legality of the Board of Appeal’s decision not in so far as it relates to the goods or services withdrawn from the list but only in so far as it relates to the other goods or services remaining on that list (see, to that effect, judgment of 9 July 2008, Mozart, T‑304/06, EU:T:2008:268, paragraphs 27 and 28 and the case-law cited).

16 However, where the restriction to the list of goods or services contained in an EU trade mark application has the object of changing, in whole or in part, the description of those goods or services, it is possible that the alteration might have had an effect on the examination of the trade mark in question carried out at various stages by EUIPO in the course of the administrative procedure. Accordingly, to allow that alteration at the stage of the action before the Court would amount to changing the subject matter of pending proceedings, which is prohibited by Article 188 of the Rules of Procedure (see judgments of 20 November 2007, Tegometall International v OHIM — Wuppermann (TEK), T‑458/05, EU:T:2007:349, paragraph 25 and the case-law cited, and of 9 July 2008, Mozart, T‑304/06, EU:T:2008:268, paragraph 29 and the case-law cited; see also, to that effect, judgment of 20 February 2013, Caventa v OHIM — Anson’s Herrenhaus(B BERG), T‑631/11, not published, EU:T:2013:85, paragraphs 22 to 25).

17 In the present case, the restriction introduced by the applicant subsequent to delivery of the contested decision consists, in essence, in specifying the category of ‘software applications for mobile phones and software applications for computers’, which then becomes ‘software applications for smartphones and tablets’.

18 Such a restriction may not be construed as a statement that the decision at issue is contested only to the extent that it refers to the goods ‘software applications for smartphones and tablets’ and could influence the assessment as to whether the contested mark has acquired distinctive character through use. If that restriction were taken into consideration in these proceedings, the Court would have to assess the contested trade mark in the present proceedings with reference to ‘software applications for smartphones and tablets’ only, which was not the subject of the assessment by the Board of Appeal.

19 The applicant requested that the mark applied for be registered for Class 9 goods covering ‘Computer software for scanning images and documents; Computer programmes for data processing; Computer programmes for image processing; Computer programs [downloadable software]; Software; Mobile software; Computer software; Downloadable software’. It must therefore be held that the restriction requested by the applicant at the hearing is not only intended to limit the goods in Class 9 to ‘mobile software and computer software’, but further to modify this category to ‘software applications for smartphones and tablets’. To specify the goods in that way would amount to a modification of the subject matter of the dispute before the Board of Appeal.

20 Accordingly, the request introduced at the hearing for a restriction of the goods may not be taken into account by the Court in assessing the legality of the contested decision and must be declared inadmissible.

21 In support of his action, the applicant puts forward a single plea in law, alleging infringement of Article 7(3) of Regulation 2017/1001.

22 The applicant’s plea is divided into two parts. In the first part, the applicant argues that the Board of Appeal erred in failing to recognise the special nature of the goods for which registration is sought, and how such goods are distributed and marketed. In the second part, the applicant argues that the Board of Appeal erred in its assessment of the evidence, in concluding that the mark applied for had not acquired distinctiveness through use. The applicant raises three grounds of challenge in support of that line of argument. In the first place, the applicant argues that the Board of Appeal failed to adequately take into account evidence of distinctive character acquired through use of the mark applied for, including statements by independent professionals, internet search statistics for the keywords ‘scanner pro’ and evidence from third parties. In the second place, the applicant submits that the Board of Appeal wrongly penalised him for not including evidence in the form of market studies and statements by professional associations among the evidence of such use. Finally, in the third place, he claims that the Board of Appeal was wrong to find that the evidence produced did not establish use of the contested mark in respect of the Class 42 services.

24 As a preliminary point, it is apparent from paragraph 19 of the contested decision that the relevant public includes both the professional public and the general public, given the nature of the IT goods in question. It also follows from paragraph 23 of the contested decision that the use of the mark applied for must be considered in relation to the public in the Member States where English is an official language, namely Ireland, Malta and the United Kingdom, and in the Member States where English is generally understood, namely Denmark, Cyprus, the Netherlands, Finland and Sweden. These findings, which moreover are not challenged by the applicant, are free of error and may be upheld.

25 Furthermore, the applicant does not contest the Board of Appeal’s findings that the mark applied for is descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001 and is devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation. The applicant argues that the Board of Appeal erred in finding that the mark applied for had not acquired distinctive character through use under Article 7(3) of Regulation 2017/1001.

26 In that regard, Article 7(3) of Regulation 2017/1001 does not provide an independent right to have a trade mark registered, rather it is an exception to the grounds for refusal listed in Article 7(1)(b) to (d) of Regulation 2017/1001 (see judgment of 6 July 2011, Audi and Volkswagen v OHIM (TDI), T‑318/09, EU:T:2011:330, paragraph 40 and the case-law cited).

27 Under Article 7(3) of Regulation 2017/1001, the absolute grounds for refusal contained in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, as a consequence of the use which has been made of it, the mark has become distinctive in relation to the goods or services for which registration is sought.

28 In the circumstances referred to in Article 7(3) of Regulation 2017/1001, the fact that the sign which constitutes the mark in question is actually perceived by the relevant public as an indication of the commercial origin of goods or services is the result of an economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) of Regulation 2017/1001, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (judgments of 3 December 2003, Audi v OHIM (TDI), T‑16/02, EU:T:2003:327, paragraph 50, and of 14 December 2017, bet365 Group v EUIPO — Hansen (BET 365), T‑304/16, EU:T:2017:912, paragraph 25).

29 In the first place, the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark. That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the goods or services concerned from those of other undertakings (see judgment of 29 September 2010, CNH Global v OHIM (Combination of the colours red, black and grey for a tractor), T‑378/07, EU:T:2010:413, paragraphs 28 and 29 and the case-law cited; see also, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraphs 26 and 29].

30 In the second place, in order to register a trade mark on the basis of Article 7(3) of Regulation 2017/1001, the distinctive character acquired through the use of the mark must be demonstrated in the part of the European Union in which it did not have that character for the purposes of Article 7(1)(b) to (d) of that regulation (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 75 and the case-law cited).

31 In the third place, a mark must have become distinctive through use before the application was filed (see judgment of 29 September 2010, Combination of the colours red, black and grey for a tractor, T‑378/07, EU:T:2010:413, paragraph 34 and the case-law cited).

32 In the fourth place, in determining whether the sign in question has acquired distinctive character as a consequence of the use which has been made of it, an overall assessment must be made of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. For the purposes of that assessment, account may be taken of, inter alia: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons which, because of the mark, identifies the goods or services concerned as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 29 September 2010, Combination of the colours red, black and grey for a tractor, T‑378/07, EU:T:2010:413, paragraphs 31 and 32 and the case-law cited).

33 In the fifth place, the distinctive character of a sign, including that acquired through use, must be assessed in relation, first, to the goods or services in respect of which registration of the mark is applied for and, secondly, to the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see judgment of 28 October 2009, BCS v OHIM — Deere (Combination of the colours green and yellow), T‑137/08, EU:T:2009:417, paragraph 29 and the case-law cited).

34 The question of whether in the present case the Board of Appeal erred in finding that the mark applied for had not acquired distinctive character through use must be examined in the light of those considerations.

35 In the first part of his single plea, the applicant argues that the Board of Appeal failed to take account of the special nature of the goods in respect of which registration was sought, namely software applications (‘apps’).

36 In that regard, the applicant argues, first, that traditional evidence for demonstrating that a mark has acquired distinctiveness does not always apply to apps due to their unconventional nature which makes it difficult to differentiate between the app as goods and a service, and determine how apps are distributed and marketed as goods. The applicant goes on to contest the fact that the Board of Appeal did not assess the evidence of the use of the mark applied for in combination with the icon depicted in the App Store distributed by Apple, as, it claims, the latter was a crucial part of the special nature of the app. The applicant also contests the Board of Appeal’s assessment of the evidence of the use of the mark applied for in combination with the words ‘by readdle’, which are linked with the name of the undertaking. Finally, he argues that it is possible to prove the acquired distinctiveness of a sign that has been used in conjunction with other trade marks.

37 First, as to the applicant’s claim that owing to the unconventional nature of apps, it is difficult to distinguish between the goods and service in question and to determine how those goods are distributed and marketed, it should be noted that the case-law on evidence of distinctive character acquired through use (see paragraph 32 above) does not distinguish between goods and services, and in particular does not make any distinction as to the types of evidence corresponding to each of those categories. All that is required is evidence proving that the trade mark applied for identifies the goods or services in question as originating from a particular undertaking, thus distinguishing the goods or services, regardless of which category is at issue, from those of other undertakings. Therefore, the applicant cannot claim that the evidence traditionally relied on to demonstrate that a trade mark has acquired distinctive character through use is not always relevant to signs relating to apps, on the grounds that due to their unconventional nature, the goods and service cannot readily be distinguished.

38 Therefore, the applicant’s line of argument as to the unconventional nature of the goods covered by the mark applied for should be rejected.

39 Secondly, contrary to what the applicant contends, the Board of Appeal did take into account the evidence produced by the applicant on the use of the words ‘scanner pro’ alongside the icon depicted in the App Store or the words ‘by readdle’. By recognising the visual prominence of those additional figurative and word elements (see paragraphs 72 and 78 of the contested decision), the Board of Appeal was correct in finding that the applicant’s evidence was not sufficient to demonstrate that the mark applied for, as represented by the word sign Scanner Pro, had acquired intrinsic distinctive character in the relevant territory in the perception of the relevant public, on the ground that it was not capable, in and of itself, of identifying the particular undertaking from which the goods and services at issue originated.

40 The applicant argues that according to the case-law, for a mark to acquire distinctive character through use, it need not necessarily have been used independently, and the acquisition of distinctive character may result from its use as part of another registered trade mark or from its use in conjunction with another registered trade mark.

41 Admittedly, it follows from the case-law that the acquisition of distinctive character of a mark may be as a result either of the use, as part of a registered trade mark, of a component thereof or of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceives the good or service, designated exclusively by the mark applied for, as originating from a particular undertaking (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 49 and the case-law cited; see also, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30).

42 However, although the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark, the fundamental condition is always that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the perception of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. It follows that in order to register a trade mark which has become distinctive in consequence of the use which has been made of it within the meaning of Article 7(3) of Regulation 2017/1001, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular undertaking (judgment of 7 December 2017, Colgate-Palmolive v EUIPO (360°), T‑332/16, not published, EU:T:2017:876, paragraph 43; see also, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30).

43 In the present case, regarding the figurative element representing the icon of the app in question, it must be pointed out that even if the icon in question were a figurative mark held by the applicant, it also follows from the case-law that the relevant class of persons will not perceive the goods designated by the sign applied for as originating from a particular undertaking when that sign is always accompanied, in the evidence produced, by other marks held by the applicant, which are capable of being distinctive (see, to that effect, judgments of 6 July 2011, TDI, T‑318/09, EU:T:2011:330, point 73 and the case-law cited, and of 9 July 2014, Pågen Trademark v OHIM (gifflar), T‑520/12, not published, EU:T:2014:620, paragraph 43). That is true a fortiori in the present case, given that the evidence submitted by the applicant shows that the icon is predominant and most often used completely separately from the word element ‘scanner pro’, and thus does not confer distinctiveness on that element in itself but rather, given the descriptive nature of that element, renders it explanatory of the icon at issue, as rightly noted by the Board of Appeal in paragraph 71 of the contested decision, which the applicant indeed does not contest.

44 That finding is not affected by the judgment of 14 December 2017, BET 365 (T‑304/16, EU:T:2017:912), cited by the applicant. In the case which gave rise to that judgment, the General Court merely applied the case-law referred to in paragraph 40 above, and held that the use of the ‘bet365’ element in combination with colours, fonts, figurative elements or other word elements could not be regarded as inherently incapable of helping to show that the word mark BET 365 had acquired distinctive character through use (judgment of 14 December 2017, BET 365, T‑304/16, EU:T:2017:912, paragraph 39). Moreover, while the General Court held that it could hardly be disputed that use as a trade mark of the figurative mark including the element ‘bet365’ established a link between the word mark BET 365 and the applicant’s goods or services, that outcome could be explained by the fact that that case concerned a figurative mark comprised of a word element that in itself constituted the trade mark applied for, whereas, in the present case, the figurative element consisting of the icon in question is used in conjunction with the word element ‘scanner pro’, which constitutes the trade mark applied for.

45 In any event, it must be found that both the word element ‘scanner pro’ and the pictorial icon as such are inherently devoid of distinctive character, as held by the Board of Appeal in paragraph 70 of the contested decision, and are therefore not capable of identifying the goods or services concerned as originating from a particular undertaking, so as to distinguish those goods and services from those of other undertakings.

46 As for the word element ‘by readdle’, even if it were to form a registered trade mark together with the element ‘scanner pro’ and, possibly, another element, it must be pointed out that the element ‘readdle’ refers to the company operated by the applicant, which markets the app in question. Thus, that element as such establishes that the goods concerned originate from that company, and therefore the indication of origin of those goods results from that information, not from the element ‘scanner pro’ (see, to that effect, judgment of 9 July 2014, gifflar, T‑520/12, not published, EU:T:2014:620, paragraph 45).

47 The Board of Appeal was therefore correct in finding, in paragraphs 72, 78 and 79 of the contested decision, that the evidence submitted by the applicant regarding the icon and the elements ‘scanner pro’ and ‘by readdle’ did not prove that the trade mark applied for was capable, as such, of indicating the commercial origin of the goods and services at issue in the present case.

48 As a result, the first part of the applicant’s single plea must be rejected.

49 In the second part, the applicant argues that the Board of Appeal erred in its assessment of the evidence, in finding that the mark applied for had not acquired distinctive character through use.

50 The applicant puts forward three grounds of challenge in support of that line of argument. In the first place, the applicant claims that the Board of Appeal failed to adequately take into account the evidence it had produced that the mark applied for had acquired distinctive character through use. In the second place, he submits that the Board of Appeal wrongly penalised him for not including evidence in the form of market studies and statements by professional associations in the evidence of use. In the third place, he argues that the Board of Appeal erred in finding that the evidence produced did not demonstrate use of the mark applied for in relation to the Class 42 services.

51 Regarding the first ground of challenge, alleging that the Board of Appeal erred in its assessment of the evidence of use, the applicant contests, first of all, the Board of Appeal’s assessment of the statements by independent professionals in the IT sector. The applicant argues in that respect that every witness statement should have been examined and regarded as coming from an independent source, given that the witnesses were acting as individuals and do not have close ties with the applicant.

52 In that respect, as is apparent from paragraph 57 of the contested decision, while the Board of Appeal held that the witness statements produced had probably been requested and coordinated by the applicant, it also found that by reason of their content and evidentiary value, the witness statements reflected the individual opinions of independent IT professionals on the well-known character of the mark the applicant applied for, and supported the information already provided. Therefore, it must be found that the Board of Appeal did examine the witness statements from independent professionals submitted by the applicant.

53 The applicant also contests the Board of Appeal’s finding that the statements from independent professionals are not capable of showing that the mark applied for had acquired distinctive character through use in the perception of the relevant public in respect of all types of goods and services in question. In that regard, he argues that the Board of Appeal failed to take sufficient account of the evidentiary value of the witness statements, which, taken together with all the other evidence submitted, demonstrate that the mark applied for had acquired distinctive character through use throughout the European Union.

54 As the applicant has indeed pointed out, it follows from the case-law that an overall assessment must be made of the evidence that the trade mark has come to identify the goods or services concerned as originating from a particular undertaking (see paragraph 32 above). However, it also follows from the case-law that, in the context of that overall assessment, greater weight may be given to certain evidence. In particular, sales figures and advertising materials can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market research and by statements from trade and professional associations or the specialist public (see judgment of 7 December 2017, 360°, T‑332/16, not published, EU:T:2017:876, paragraph 46 and the case-law cited).

55 On that point in the present case, contrary to what the applicant contends, although the Board of Appeal did not admit statements from independent third parties, namely IT professionals with no contractual ties to the applicant, as ‘direct evidence’ within the meaning of the case-law referred to in paragraph 54 above, it did rightly take those statements into account as relevant evidence, noting that they were not sufficient in themselves and that further evidence was required. The statements at issue set out the personal opinions of professionals, as expressly noted in some. As a result, notwithstanding general reference in some statements to the term ‘users’ of the application concerned, they provide direct evidence of the opinion of the professional public only and are therefore insufficient, since the relevant public also includes the general public (see, to that effect, judgments of 12 September 2007, Glaverbel v OHIM (Texture of a glass surface), T‑141/06, not published, EU:T:2007:273, paragraph 44, and of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 138).

56 It should also be noted that the judgment of 12 May 2016, Zuffa v EUIPO (ULTIMATE FIGHTING CHAMPIONSHIP) (T‑590/14, not published, EU:T:2016:295), referred to by the applicant in point 21.1 of his application, may not be considered relevant in the present case. Indeed, as is apparent from paragraph 80 of that judgment cited by the applicant, that case concerned statements from national and international federations in the field in question, not from independent professionals in the sector.

57 It follows from the foregoing that the Board of Appeal examined and made a fair assessment of the witness statements from independent professionals in the IT sector submitted by the applicant.

58 In the second place, the applicant contests the assessment by the Board of Appeal in paragraph 76 of the contested decision concerning Exhibit No 26 of the file before EUIPO on internet search statistics for the keywords ‘scanner pro’, which found that there is no evidence that those words had been searched in order to find the applicant’s app, as opposed to professional scanners. The applicant also argues that when users search for ‘scanner pro’, ‘scanner pro app’ and especially ‘scanner pro readdle’, it is clear that they are not searching for just any app, but for his app, ‘Scanner Pro’.

59 In that regard, first of all, it must be held that the applicant concedes that descriptive terms are commonly used together with the abbreviation ‘pro’ on the market.

60 Secondly, Exhibit No 26 on internet search statistics for the keywords ‘scanner pro’ specifies that the data therein relates to ‘European countries’, without specifying any particular country. However, it should be noted that the use of the requested trade mark must be assessed with reference to the public of the Member States where that sign is devoid of any distinctive character (see paragraph 24 above).

61 Thirdly, the Board of Appeal’s finding in paragraph 76 of the contested decision that it is logical that the keywords ‘scanner pro’ were searched for more often than the words ‘scanner pro app’, ‘scanner pro readdle’, ‘ipad pro scanner’ and ‘scanner pro iphone’, as the more words that are added to a search for a descriptive term such as ‘scanner’, the lower the monthly average for the search of those terms will be, must also be upheld.

62 Fourthly, as to the evidentiary value of the internet search statistics, although it has been found that such statistics could be capable of demonstrating that a sign has acquired distinctive character through use, that possibility has only been accepted in special circumstances such as, for example, where the majority of the marks in the sector are inherently descriptive or clients were generally regular customers, permitting the inference that clients used the mark at issue to identify the applicant’s goods or services, as opposed to goods or services offered by its competitors (see, to that effect, judgment of 14 December 2017, BET 365, T‑304/16, EU:T:2017:912, paragraphs 44 and 46). It has not been claimed, let alone established, that such circumstances exist in the present case. Furthermore, although the searches at issue appear to establish a certain level of awareness of the trade mark applied for, such awareness of the mark does not amount to distinctive character acquired through use, where the mark is perceived by the relevant public as an indication of commercial origin (see, to that effect, judgment of 21 May 2014, Bateaux mouches v OHIM (BATEAUX-MOUCHES), T‑553/12, not published, EU:T:2014:264, paragraph 70).

63 Finally, although it has been proven in the contested document that the terms ‘scanner pro’ are searched more often than ‘scanner pro app’, ‘scanner pro readdle’, ‘ipad pro scanner’ and ‘scanner pro iphone’, that document does not show that the result of the search at issue means that the relevant public perceives the mark applied for as an indication of commercial origin.

64 In the light of the foregoing, the objections to the Board of Appeal’s findings in paragraph 76 of the contested decision on the internet search statistics provided by the applicant must be dismissed.

65 In the third place, in paragraph 27 of his application, the applicant submits that he has presented a great deal of third party evidence that is sufficient to demonstrate frequent use of the mark applied for. According to the applicant, that evidence is relevant and probative as to the use, within the EU, of the sign applied for in combination with the icon.

66 However, in support of those claims, the applicant merely makes reference to a list of documents containing statements from independent professionals, internet search statistics for the keyword ‘scanner pro’, press releases and screenshots referring to the element ‘scanner pro’. However, the applicant offers no explanation as to how that information demonstrates that the relevant public perceives the mark applied for as an indication of commercial origin.

67 Furthermore, as regards statements from independent professionals and internet search statistics, it is sufficient to refer to the reasoning in paragraphs 52 to 64 above.

68 As for the press releases and screenshots referring to the element ‘scanner pro’, aside from the fact that much of the evidence submitted is illegible, it is comprised of advertising materials for the ‘Scanner Pro’ app for iPhones and tablets. It is settled case-law that advertising materials as such can be regarded only as secondary evidence which may support, where relevant, the direct evidence of distinctive character acquired through use. Advertising materials as such do not show that the public targeted by the goods or services in question perceives the sign as an indication of commercial origin (judgments of 12 September 2007, Texture of a glass surface, T‑141/06, not published, EU:T:2007:273, paragraph 41, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 84). In the present case, in the absence of any other explanation or information and although some of the documents contain ‘scanner pro’ as a standalone search term, it cannot be inferred that the general public will perceive those references as indicative of the commercial origin of the goods in question.

69 In the light of the foregoing, none of the evidence examined, considered in isolation or altogether, is sufficient to establish that the mark applied for has acquired distinctive character through its use with the relevant public.

70 Accordingly, the first ground of challenge in the second part of the sole plea raised by the applicant must be rejected.

71 The applicant submits in his second ground of challenge that the Board of Appeal wrongly penalised him for not including evidence in the form of market studies and statements by professional associations among the evidence of use submitted.

72 As noted in paragraph 54 above, it follows from the case-law that greater weight may be given to certain evidence, particularly market studies and statements from trade and professional associations and therefore, the Board of Appeal cannot be criticised for finding that the applicant failed to carry out a market study demonstrating that a significant proportion of the relevant public identifies the mark applied for as such (paragraph 56 of the contested decision). In the present case, in determining that the acquisition of distinctive character through use had not been proven, the Board of Appeal did not rely solely on the absence of that direct evidence, but went on to examine secondary evidence submitted by the applicant and rightly found that taken together, that evidence was insufficient to demonstrate that the relevant public would perceive the goods or services of the mark applied for as having a particular commercial origin. Therefore, the applicant cannot criticise the Board of Appeal for penalising him for not submitting evidence from market studies and statements by professional associations.

73 Accordingly, the second ground of challenge in the second part of the sole plea raised by the applicant must be rejected.

74 With respect to the third ground of challenge, the applicant argues that the Board of Appeal wrongly found that he had not produced evidence proving use of the mark applied for in respect of the Class 42 services designated by that mark. The applicant claims that his app provides users with a service to scan images and documents by means of an item of goods, namely the app. He argues that because the definitions of the goods, on the one hand, and the services, on the other hand, are interchangeable, no distinction can be drawn between those two categories, and for that reason, the evidence provided is relevant to both the goods and the services designated by the mark sought.

75 In that regard, as noted in paragraph 37 above, it must be held that when assessing evidence of distinctive character acquired through use of the mark applied for, the same criteria apply to both the goods and the services covered by the trade mark application. Furthermore, even if the evidence submitted by the applicant did also relate to the services supplied, the Board of Appeal was correct in finding that such evidence was not sufficient to demonstrate that because of the use of the sign applied for as a word mark, at least a significant proportion of the relevant public identified the goods or services concerned as originating from a particular undertaking.

76 It follows that the third ground of challenge must be rejected, along with the second part of the plea in its entirety.

77 In the light of the reasoning set out above, the sole plea raised by the applicant alleging infringement of Article 7 of Regulation 2017/1001 must be rejected as unfounded and the action must therefore be dismissed in its entirety.

78 Under Article 134(1) of the Rules of Procedure, 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.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Zhadanov v EUIPO (Scanner Pro) (EU trade mark - Judgment) [2019] EUECJ T-492/18 (24 September 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T49218.html Cite as: EU:T:2019:667, [2019] EUECJ T-492/18, ECLI:EU:T:2019:667, [2020] ETMR 5

Court of Justice of the European Communities (including Court of First Instance Decisions)