Appeal brought on 8 February 2013 by Getty Images (US), Inc. against the judgment of the General Court (Fifth Chamber) delivered on 21 November 2012 in Case T-338/11: Getty Images (US), Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-70/13 P)

2013/C 101/26

Language of the case: English

Parties

Appellant: Getty Images (US), Inc. (represented by: P. Olson, advokat)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

The appellant claims that the Court should:

Pleas in law and main arguments

In support of its appeal, the appellant raises three pleas in law: (i) infringement of CTMR (1) Art. 7(1)(b), (ii) infringement of Art. 7(1)(c) and (iii) infringement of the principle of equal treatment.

Under Art. 7(1)(b), a mark may not be registered if it is devoid of ‘any distinctive character.’ A minimum degree of distinctive character is sufficient to render inapplicable the grounds for refusal set out in that article Here the fact that the identical mark for identical and similar goods/services has twice been considered to possess the requisite distinctive character creates a very strong presumption that the PHOTOS.COM possesses the minimum amount of distinctiveness necessary. The mere fact that each of the elements considered separately is devoid of distinctive character does not mean that their combination is not distinctive. As a combination of PHOTOS +.COM, the mark takes on a meaning independent of those elements’ individual meanings. It is clearly understood by the relevant audience to be a commercial domain name. Domain names are unique in their nature. As such, PHOTOS.COM indicates to the consumer that it is a unique origin of goods and services which is distinguishable from other sources of goods and services with a different name. In this way, it fulfils the purpose of a trademark and meets the Art. 7(1)(b) threshold for distinctiveness.

The public interest to take into consideration in applying Art. 7(1)(b) is to examine whether the mark is capable of guaranteeing the identity of the origin of the goods/services to the consumer by enabling him, without any possibility of confusion, to distinguish the service from others which have another origin. It is common ground that each domain name is unique, and that a domain name ending in.com indicates a commercial website. In paragraph 22 of the contested decision, the General Court acknowledged that the.com element will immediately be recognised by the relevant public as referring to a commercial internet site. The Court erred by ignoring the fact that the domain name functions well to enable the consumer to distinguish the applicant’s goods/services from the applicant’s competitors. The public interest in protecting the consumer is achieved and Art. 7(1)(b) is not infringed.

As regards Art. 7(1)(c), the General Court elected not to address this issue. Nonetheless it is not infringed in that the public interest behind that provision is the protection of the appellant’s competitors, none of whom are affected by the registration because it is a domain name be-longing to the appellant. Nor is the mark objectively descriptive in relation to the goods/services.

The principle of equal treatment demands that OHIM must be bound by its own prior decisions when reviewing identical trademark applications absent any indication that the earlier marks were registered in error. This principle compels the court to set aside OHIM’s conclusion that PHOTOS.COM was not eligible for registration. The General Court argues that these principles must be balanced with ‘respect for legality’ and that trademark applicants may not rely on prior decisions to secure an identical decision, because the prior decision was a ‘possibly unlawful act committed to the benefit of someone else’; therefore, the court found that ‘such an examination must be undertaken in each individual case’ (paragraph 69 of the contested decision).

The principle of equal treatment is at odds with the principle of legality. Since the STREAMSERVE decision (see Judgment of 27 February 2002, Case T-106/00, Streamserve v OHIM), the principle of legality has had the upper hand. This has resulted in legal uncertainty and a flood of appeals. In light of this experience more focus on the principle of equal treatment is warranted. OHIM examiners have a duty to act consistently, to apply common standards, to identify analogous cases and to give them similar treatment. When trademark applicants refer to prior registered marks, OHIM examiners should not simply be allowed to refer to STREAMSERVE and ignore the fundamental principle of equal treatment. Instead of a principle of legality whereby prior registrations are literally considered mistakes, a much more viable method is to presume that the prior marks were properly registered. In no instance is the duty to apply the principle of equal treatment so clear as where, as here, the marks and the goods are identical.

To conclude, the mark PHOTOS.COM is equally distinctive for its goods and services as the two prior registered marks. The same basis exists for registering the mark for these as it does for the original marks, and the principle of equal treatment requires this.

(1)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark

OJ L 78, p. 1