 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
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) >> Shorts International v EUIPO (SHORTS) (EU trade mark - Judgment) [2025] EUECJ T-307/24 (12 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T30724.html Cite as: [2025] EUECJ T-307/24 |
||
[New search] [Contents list] [Help]
JUDGMENT OF THE GENERAL COURT (First Chamber)
12 March 2025 (*)
( EU trade mark - Application for EU word mark SHORTS - Absolute ground for refusal - Descriptive character - Article 7(1)(c) of Regulation (EU) 2017/1001 )
In Case T‑307/24,
Shorts International Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister-at-Law,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni, President, I. Gâlea (Rapporteur) and S.L. Kalėda, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after 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
Judgment
1 By its action under Article 263 TFEU, the applicant, Shorts International Ltd, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 April 2024 (Case R 2199/2023-4) (‘the contested decision’).
Background to the dispute
2 On 4 March 2021, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign SHORTS.
3 The mark applied for designated goods and services in Classes 9, 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 corresponds, for each of those classes, to the following description:
– Class 9: ‘Sound, video and data recordings; cinematographic films; films for television; video and audio tapes, cassettes, discs; computer software; television programmes recorded on magnetic, optical and electronic media; CDs, DVDs; electronic data media; digital recording media; computer programmes for interactive television and for interactive games and/or quizzes; computer games; virtual reality hardware content; virtual reality software content for games; electronic entertainment software; interactive video content and game programs; all the aforesaid also supplied to or provided by telecommunications networks, mobile telephones, mobile media devices, on-line from a computer database or the internet; software for streaming audiovisual and multimedia content via the internet and global communications networks; software for streaming audiovisual and multimedia content to mobile and smart digital electronic devices and consumer goods; software for searching, indexing, organizing, and recommending audiovisual and multimedia content; mobile applications for accessing and streaming audiovisual and multimedia content via the internet and global communications networks; downloadable audiovisual content such as short films, short film series, short form content, episodic and non-episodic; downloadable audiovisual content such as motion pictures; downloadable audiovisual content such as television shows across all genres such as action-adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, factual entertainment, faith, family, fantasy, history, horror, international, kids, musical, mystery, news, general interest, reality television, romance, science fiction, sports, thrillers, war, and westerns provided via a video-on-demand service; software and/or firmware which enhances the users experience of searching and making choices; publications in electronic form supplied on-line from databases or from facilities provided on the internet or other communications networks; electronic magazines, directories, pamphlets, books, periodicals, catalogues, bulletins, guides, manuscripts and newsletters’;
– Class 38: ‘Broadcasting, streaming, webcasting and transmission of films, videos and television programmes; broadcasting and transmission of television programmes and games via telecommunications networks, mobile phones, mobile media and on-line from a computer database or the internet; electronic delivery of films, videos, television programmes and computer games by telecommunications networks, mobile phones, mobile media and online from a computer network or the internet; video-on-demand transmission services; subscription television, video broadcasting; transmission of voice, data, images, signals, messages and information; providing information regarding other video on-demand transmission services, video-on-demand transmission services’;
– Class 41: ‘Entertainment services, online and educational services, in the nature of the development, production, post production, presentation and distribution of short films, serialized short films, short form content, feature films, videos, music videos, television programmes and live events; publication of computer games; entertainment services consisting of short films, short film series, short form content, episodic and non-episodic, motion pictures, television shows, television series; all the aforesaid in relation to the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, factual entertainment, faith, family, fantasy, history, horror, international, kids, musical, mystery, news, general interest, reality television, romance, science fiction, sports, thrillers, war, and westerns; providing information on the subjects of short films, serialized short films, feature length motion pictures, television programming, and short-form episodic and non-episodic content, current events, entertainment, sports, comedy, drama, music, and music videos, via a website; providing information, reviews, and personalized recommendations regarding short films, serialized short films, feature length movies, television shows, and short-form episodic and non-episodic content via a website; providing reviews, and personalized recommendations regarding other video on-demand transmission services, video-on-demand transmission services, for entertainment purposes; providing non-downloadable short films, serialized short films, feature length films, television shows, and episodic and non-episodic short and long form content via a video-on-demand transmission service; providing electronic publications, and databases on-line and/or on electronic media relating to entertainment, movies, short films, programmes, documentaries, television and radio programming, previews, trailers, competitions, sports, concerts, celebrity and entertainment news, education, games, culture, leisure, activities, contests and events; cable television programming services; premium and pay television programming services; pay per view television programming services; providing the aforesaid services using the internet and other electronic communications networks’;
– Class 42: ‘Hosting and maintaining an online community featuring audio, audiovisual, and multimedia content in the fields of short film, short form content, motion pictures, television programming, current events, entertainment, sports, comedy, gaming, esports, drama, music, and music videos; design and development of interactive databases’.
4 By decision of 2 September 2023, the examiner rejected, in part, the application for registration, in so far as it related to the goods and services referred to in paragraph 3 above, except for ‘computer programmes for interactive television and for interactive games and/or quizzes; computer games; virtual reality software content for games’ in Class 9 and the service ‘publication of computer games’ in Class 41, on the basis of Article 7(1)(b) and (c) of 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 examiner also rejected the applicant’s claim that the mark applied for had acquired distinctive character through use within the meaning of Article 7(3) of that regulation.
5 On 1 November 2023, the applicant lodged an appeal with EUIPO against the examiner’s decision.
6 By the contested decision, the Board of Appeal upheld, in part, the appeal by annulling the examiner’s decision for the services of ‘providing information on the subjects of feature length motion pictures via a website; providing information, reviews, and personalized recommendations regarding feature length movies via a website; providing non-downloadable feature length films and long form content via a video-on-demand transmission service’ in Class 41 and dismissing the appeal as to the remainder. The Board of Appeal found that, as regards the goods and services in respect of which the appeal was dismissed, the mark applied for was descriptive of the goods and services at issue and devoid of distinctive character.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– examine the mark applied for and order the registration of that mark;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
Head of claim seeking registration of the mark applied for
9 By its second head of claim, the applicant requests that the Court order the registration of the mark applied for.
10 When exercising judicial review of legality under Article 263 TFEU, the Court does not have jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
11 It follows that the second head of claim, by which the applicant requests that the Court issue directions to EUIPO, must be rejected on the ground that the Court does not have the jurisdiction to take cognisance of it.
Head of claim seeking annulment of the contested decision
12 In support of its claim for annulment of the contested decision, the applicant relies on two pleas in law, alleging: (i) infringement of Article 7(1)(c) of Regulation 2017/1001, and (ii) infringement of Article 7(1)(b) of that regulation.
First plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
13 By its first plea, the applicant submits, in essence, that the Board of Appeal incorrectly took into consideration only one of the meanings of the term ‘shorts’, namely ‘of little length’, and that that error of assessment vitiates all of its reasoning in the contested decision.
14 EUIPO disputes the applicant’s arguments.
15 Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, must not be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
16 Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
17 For a sign to fall within the scope of the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, 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 goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
18 A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
19 It is in the light of those considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001.
– The relevant public
20 In paragraph 31 of the contested decision, first, the Board of Appeal found that the relevant public consists not only of the public in the Member States in which English is an official language, namely, Ireland and the Republic of Malta, but also the public in the Member States where English is largely understood, namely, in particular, the Kingdom of Denmark, the Kingdom of the Netherlands, the Republic of Finland and the Kingdom of Sweden. Second, the Board of Appeal also found that due to the particular nature of the goods and services in the present case, those goods and services were addressed both to the general public, who will display an average to a higher than average degree of attention, and to the professional public.
21 Those findings of the Board of Appeal are not disputed by the applicant.
– The meaning of the mark applied for
22 The applicant claims that the Board of Appeal erred in finding that the relevant public would understand the mark applied for as meaning ‘of little length’. The applicant submits that, even though that meaning is possible, it is not the primary meaning, that is to say ‘short trousers’. In addition, the term ‘shorts’ has a number of other well-known meanings, such as, for example, that relating to ‘financial securities’ or ‘items needed to make up a deficiency’.
23 EUIPO disputes the applicant’s arguments.
24 It should be recalled that, pursuant to Article 7(2) of Regulation 2017/1001, a trade mark is to be refused protection notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
25 In addition, according to the case-law, a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32; see also, judgment of 2 December 2020, BSH Hausgeräte v EUIPO (Home Connect), T‑152/20, not published, EU:T:2020:584, paragraph 22 and the case-law cited).
26 The Board of Appeal found that the relevant English-speaking consumer would understand the sign to mean ‘of little length’, that the structure of that sign was grammatically correct and that that sign does not require any effort to be understood. According to the Board of Appeal, the use on the internet of the word ‘shorts’ and the expression ‘short films’ is widely understood to designate short films. In addition, it found that, in any event, the adjective ‘short’ designates a characteristic of the goods and services relating to cinema, namely their length or duration.
27 In the present case, first, it should be recalled that the applicant acknowledges that one of the meanings of the word ‘shorts’ is that of ‘little length’.
28 Second, the applicant does not dispute the Board of Appeal’s findings, in paragraphs 42 and 43 of the contested decision, that, in the first place, the term ‘shorts’ was used to designate short films and, in the second place, specific film festivals were devoted to that type of film of short duration, called ‘shorts’ or ‘short films’.
29 According to the case-law cited in paragraph 25 above, a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.
30 Therefore, even assuming, as the applicant submits, that the term ‘shorts’ has a broad meaning or may have several meanings, the Board of Appeal did not make an error of assessment in deciding to base its analysis on the meaning ‘little length’, even though that meaning is not the only and primary meaning of the term at issue.
31 It follows that the Board of Appeal’s analysis of the relevant public’s perception of the meaning of the mark applied for is not vitiated by any error of assessment.
– The general reasoning
32 The applicant criticises the Board of Appeal for having assessed the descriptive character of the mark applied for overall, with regard to all the goods and services at issue, without having ascertained whether those goods and services were sufficiently comparable to be grouped together in that way.
33 EUIPO contests the applicant’s arguments.
34 When examining the absolute grounds for refusal, the Board of Appeal is required to state, in its decision, the conclusion reached by it in respect of each of the goods and services specified in the application for registration (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 29).
35 However, although the decision must, as a rule, state the reasons in respect of each of the goods or services concerned, the competent authority may nonetheless limit itself to using general reasoning where the same ground for refusal is given for a category or group of goods or services that have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogeneous category or group of goods or services (see judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31 and the case-law cited, and of 23 September 2015, Reed Exhibitions v OHIM (INFOSECURITY), T‑633/13, not published, EU:T:2015:674, paragraph 46 and the case-law cited).
36 In the present case, it must be held that the Board of Appeal found that the use of the English adjective ‘short’ was descriptive of a characteristic of the goods and services relating to cinema, namely their length or duration, and it identified and analysed several different categories of goods and services.
37 The Board of Appeal found that the services in Class 38 were all related to the broadcasting and transmission of programmes in general, such as films of short length or games, on various media. As regards the services in Class 41, the Board of Appeal found that they consisted, first, of entertainment services, second, of providing information relating to entertainment and, third, of providing, inter alia, non-downloadable films and television programmes. As regards the services in Class 42, the Board of Appeal found that they were linked to cinematographic content. Lastly, as regards the goods in Class 9, the Board of Appeal found that they were all media support and media for short films (recordings, films, tapes, software and so forth) or elements which contributed to their creation, production or distribution, or elements referring to their content or subject matter.
38 However, the applicant does not substantiate its claim that the goods and services at issue, as grouped together by the Board of Appeal, are not sufficiently homogeneous, within the meaning of the case-law cited in paragraph 35 above.
39 The applicant merely criticises the Board of Appeal for failing to provide an explanation as to how the term ‘shorts’ is directly descriptive of all the goods in Class 9, with the result that the relevant consumer would immediately and without further thought establish a specific and direct relationship with those goods.
40 It must be held that that argument is not such as to call into question the merits of the Board of Appeal’s grouping of the goods and services at issue in order to examine the descriptive character of the mark applied for in relation to those goods and services.
41 In those circumstances, it must be held that the Board of Appeal was entitled, without infringing its obligation to state reasons, after carrying out an overall examination, in respect of each category of goods and services at issue in respect of which registration was refused, to establish a single conclusion, based on the same ground for refusal, relating to each of those categories.
– The link between the mark applied for and the goods and services in question
42 The applicant criticises, in essence, the Board of Appeal for having erred in finding that the term ‘shorts’ was descriptive of the goods and services covered by the application for registration. The applicant submits, in particular, that, if the Board of Appeal had recognised the broad meaning of the term ‘shorts’, without merely stating that that term meant ‘of little length’, it would have found that consumers are less likely to establish an immediate and unambiguous link between that term and the goods and services concerned. In addition, the applicant criticises the Board of Appeal for having accepted that meaning in the context of short films, and for having generalised that meaning to cover all the goods and services at issue, whereas that term is merely allusive, including in relation to short films. In that regard, the applicant also submits that, even if the term ‘shorts’ were understood to mean ‘of little length’, that would not however mean ‘short films’, and that to equate the two would require knowledge or a distinct context, which, in itself, precludes a finding that that sign is descriptive with regard to the goods and services at issue. Furthermore, the applicant notes that it is apparent from the case-law of the Court of Justice that if a term or an expression were to have a broad meaning, consumers would be less likely to establish an immediate and unambiguous link between that term and one of the goods and services concerned.
43 EUIPO disputes the applicant’s arguments. It submits that the relevant public would perceive the term ‘shorts’ as referring to the short length of the content or subject matter of the goods and services at issue.
44 In the present case, the Board of Appeal found that the term ‘shorts’ was used to designate video entertainment and production services and a number of goods and services relating thereto, with the result that it would be immediately and spontaneously perceived by the target public as referring to the content or subject matter of those goods and services, their length or their duration. The Board of Appeal therefore took the view that the relevant public would naturally expect, inter alia, entertainment, video content, film transmission, information and software to relate to short films or entertainment services of short duration in connection with the goods and services provided by the applicant. Accordingly, the relevant consumers would perceive the term ‘shorts’ as directly and clearly describing characteristics of the goods and services at issue.
45 In that regard, it should be borne in mind that, by using the terms ‘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’ in Article 7(1)(c) of Regulation 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).
46 The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32).
47 Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or that service (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).
48 In addition, the Court notes that the content is an essential characteristic of the goods and services at issue and that, consequently, any mark which is perceived by the relevant public as descriptive of the content of those goods and services is, at the same time, perceived as descriptive of one of their characteristics and cannot therefore be registered (see, to that effect, judgment of 3 October 2019, LegalCareers v EUIPO (LEGALCAREERS), T‑686/18, not published, EU:T:2019:722, paragraph 29).
49 In the present case, first, as regards the services in Class 38 referred to in paragraph 3 above, it should be noted, as the Board of Appeal did, that those services are all related to the broadcasting and transmission of programmes in general, such as films and audio and video programmes of short duration or games, on various media support, and that those services are necessary for the broadcasting or transmission of films, which the applicant acknowledges.
50 It must therefore be held that the mark applied for is capable of designating an essential characteristic of those services, namely their content and that it is therefore descriptive.
51 Secondly, as regards the services in Class 41 referred to in paragraph 3 above, first of all, it should be noted that ‘entertainment services, online and educational services, in the nature of the development, production, post production, presentation and distribution of short films, serialized short films, short form content, feature films, videos, music videos, television programmes and live events; entertainment services consisting of short films, short film series, short form content, episodic and non-episodic, motion pictures, television shows, television series; all the aforesaid in relation to the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, factual entertainment, faith, family, fantasy, history, horror, international, kids, musical, mystery, news, general interest, reality television, romance, science fiction, sports, thrillers, war, and westerns’ have a direct link with cinematographic entertainment and that they may refer to short films, in which case the term ‘shorts’ refers directly to their content.
52 Next, as regards ‘providing information on the subjects of short films, serialized short films, television programming, and short-form episodic and non-episodic content, current events, entertainment, sports, comedy, drama, music, and music videos, via a website; providing information, reviews, and personalized recommendations regarding short films, serialized short films, television shows, and short-form episodic and non-episodic content via a website; providing reviews, and personalized recommendations regarding other video on-demand transmission services, video-on-demand transmission services, for entertainment purposes’ in Class 41, the term ‘shorts’ refers directly to the content or duration of those types of information, review and recommendation services. As regards ‘providing electronic publications, and databases on-line and/or on electronic media relating to radio programming’ in Class 41, the mark applied for may constitute an indication of the duration of the radio programming.
53 Lastly, as regards the services of ‘providing non-downloadable short films, serialized short films, television shows, and episodic and non-episodic short and long form content via a video-on-demand transmission service; providing electronic publications, and databases on-line and/or on electronic media relating to entertainment, movies, short films, programmes, documentaries, television and radio programming, previews, trailers, competitions, sports, concerts, celebrity and entertainment news, education, games, culture, leisure, activities, contests and events; cable television programming services; premium and pay television programming services; pay per view television programming services; providing the aforesaid services using the internet and other electronic communications networks’ in Class 41, it must be noted that those services are likely to concern or have as their subject matter short films, with the result that, in that scenario, the term ‘shorts’ would refer directly to one of their characteristics, namely their short duration.
54 Thirdly, as regards ‘hosting and maintaining an online community featuring audio, audiovisual, and multimedia content in the fields of short film, short form content, motion pictures, television programming, current events, entertainment, sports, comedy, gaming, esports, drama, music, and music videos; design and development of interactive databases’ in Class 42, the Board of Appeal was correct to find that, faced with a sign which means ‘of little length’, the relevant English-speaking public will immediately and directly understand that the cinematographic content consists of short films.
55 Fourthly, as regards the goods in Class 9, which are, essentially, support media and media intended for short films (recordings, films, tapes, software and so forth) or contribute to their creation, production or distribution (streaming software, mobile applications, mobile networks, downloadable audiovisual content, online search engine publication in electronic form and so forth) or a reference to their content or subject matter (electronic magazine, books and so forth), the Board of Appeal did not err in finding that the relevant English-speaking public, on account of its perception of the word ‘shorts’, would expect content of short duration, that term ‘shorts’ then being descriptive of the content, intended purpose or subject matter of those goods.
56 Those findings cannot be called into question by the applicant’s arguments.
57 First, it should be emphasised that it has already been held that the possible meaning of a term should not be examined in the abstract, but in relation to the services covered by the marks applied for and to the consumers for whom they are intended (see, to that effect, judgment of 12 March 2014, American Express Marketing & Development v OHIM (IP ZONE), T‑102/11 and T‑369/12 to T‑371/12, not published, EU:T:2014:118, paragraph 30).
58 Therefore, contrary to the applicant’s arguments that the Board of Appeal adopted one meaning in the context of short films, and generalised that meaning to cover all the goods and services at issue, it must be held that the Board of Appeal did not err in examining the term ‘shorts’ in relation to the goods and services at issue, as is apparent from paragraphs 49 to 55 above.
59 Secondly, the applicant submits that, even if the term ‘shorts’ were understood to mean ‘of little length’, that would not mean ‘short films’, and that to equate the two terms would require knowledge or a distinct context, which would preclude the descriptive character as regards narrow categories of goods related to the content of short films.
60 The Board of Appeal was right to find, relying on the evidence submitted by the applicant, that it is common practice, on the internet, to use the term ‘shorts’ to refer to short films and that specific film festivals are devoted to that type of film called ‘shorts’ or ‘short films’. Moreover, the applicant does not provide any evidence to challenge those findings.
61 Thirdly, the applicant’s argument based on the case which gave rise to the judgment of 19 April 2007, OHIM v Celltech (C‑273/05 P, EU:C:2007:224), must also be rejected.
62 In the case which gave rise to the judgment of 19 April 2007, OHIM v Celltech (C‑273/05 P, EU:C:2007:224), the question was whether the General Court had erred in law in finding that, by failing to establish the scientific meaning of cell technology, the Board of Appeal had not shown that the mark at issue was descriptive of the goods and services referred to in the application for registration.
63 In the present case, as recalled in paragraph 28 above, the Board of Appeal established the meaning of the term ‘shorts’ in paragraphs 42 and 43 of the contested decision, according to which that term was used to designate short films and was also commonly used to refer to short-film festivals.
64 Consequently, the Board of Appeal did not commit an error of assessment in finding that there was a clear and direct relationship, within the meaning of Article 7(1)(c) of Regulation 2017/1001, between the term ‘shorts’ and the goods and services at issue in Classes 9, 38, 41 and 42.
65 Consequently, the first plea must be rejected.
The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
66 By its second plea, the applicant submits that, by concluding, on the basis of Article 7(1)(b) of Regulation 2017/1001, that the mark applied for was devoid of distinctive character with regard to the goods and services at issue, the Board of Appeal had infringed that provision.
67 EUIPO disputes the applicant’s arguments.
68 In that regard, it must be pointed out that, according to settled case-law, as is evident from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal listed therein applies in order for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
69 In the present case, since it is apparent from the examination of the first plea that the Board of Appeal rightly found that the mark applied for was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001, the second plea, alleging infringement of Article 7(1)(b) of that regulation, cannot rightfully be raised.
70 Accordingly, the second plea in law must be rejected and the action dismissed in its entirety.
Costs
71 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
72 Even though the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Shorts International Ltd and the European Union Intellectual Property Office (EUIPO) each to bear their own costs.
Mastroianni | Gâlea | Kalėda |
Delivered in open court in Luxembourg on 12 March 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.
BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII
URL: http://www.bailii.org/eu/cases/EUECJ/2025/T30724.html