DECISION

of the Fifth Board of Appeal

of 16 November 2020

In case R 987/2020-5

Distintiva Solutions S. Coop. Pequeña
Calle Avendaño, 23- BA 01008 Vitoria-Gasteiz (Araba/Álava) Spain	Cancellation Applicant / Appellant

represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain

v

Makeblock Co., Ltd
4th Floor, Building c3, Nanshan ipark, No.1001 Xueyuan Avenue, Nanshan District Shenzhen, Guangdong Province People's Republic of China	EUTM Proprietor / Defendant

represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain

APPEAL relating to Cancellation Proceedings No 22 187 C (European Union trade mark registration No 14 877 013)

The Fifth Board of Appeal

composed of V. Melgar (Chairperson), A. Pohlmann (Rapporteur) and C. Govers (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 4 December 2015, Shenzhen Maker Works Technology Co., Ltd., the predecessor of Makeblock Co., Ltd (‘the EUTM proprietor’) sought to register the figurative mark

for goods and services in Classes 6, 9 and 41, among them the following (‘the contested goods and services’):

Class 9 - Couplers [data processing equipment]; remote control apparatus; computer programs [downloadable software]; electronic sensors; printed circuit boards; teaching apparatus; detectors; microprocessors; electronic publications, downloadable; integrated circuit cards [smart cards]; inductors;

Class 41 - Organization of exhibitions for cultural or educational purposes; publication of texts, other than publicity texts; publication of books; publication of electronic books and journals on-line; writing of texts, other than publicity texts; academies [education]; education information; services of schools [education]; coaching [training]; practical training [demonstration]; teaching; organization of competitions [education or entertainment]; educational services; arranging and conducting of workshops [training]; instruction services; arranging and conducting of symposiums.

2. The application was published on 9 December 2015 and the mark was registered on 17 March 2016.

3. On 11 May 2018, Distintiva Solutions S. Coop. Pequeña (‘the cancellation applicant’) filed a request for a declaration of invalidity of the registered mark for, inter alia, the above goods and services in Classes 9 and 41.

4. The grounds of the request for a declaration of invalidity were those laid down in Article 7(1)(b)(c)(e) and (g) EUTMR.

5. By decision of 23 March 2020 (‘the contested decision’), the Cancellation Division rejected the request for a declaration of invalidity in its entirety. It gave, in particular, the following grounds for its decision:

Article 7(1)(c) EUTMR

• The contested goods and services are, inter alia, software and electronic devices in Class 9 and educational, entertainment and publication services in Class 41. The relevant public is public at large as well as professional public. Moreover, the contested mark is composed of English words. The Cancellation Division will, therefore, focus the assessment on the perception of the English-speaking public of the EU, that is, the public in the Member States in which English is an official language.

• The verbal element of the mark consists of the word ‘MAKEBLOCK’. The Cancellation Division concurs with the cancellation applicant that the consumers will have no difficulties recognizing the English words ‘MAKE’ and ‘BLOCK’ in the mark. According to case-law, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them. In the present case the two parts of the mark ‘MAKE’ and ‘BLOCK’ not only resemble known words but they are both known words and the mark does not contain any other letters that would obscure the fact that it consists of these two words put together. The figurative element will also be easily read as the letter ‘O’ due to its shape which is that of the letter ‘O’ and due to the fact that ‘O’ is the logical letter to be placed between the letters ‘L’ and ‘C’ to form a meaningful word.

• According to the online Oxford English Dictionary (http://www.lexico.com/), the above terms have the following meanings:

• make – to form or create something;

• block – a solid piece of hard material.

• There is no direct link between the meaning of ‘makeblock’ in English and the goods and services covered by the mark. As regards the goods in Class 9, the cancellation applicant argues that they are the result of joining pieces in a block and the software products are made of blocks. Moreover, it claims that the EUTM proprietor’s software is joined together to build the necessary platform for their robots.

• However, information that something was made of blocks is not a characteristic of these goods that consumers would expect to find described on the products. While it is true that method of production can be relevant information for consumers in some cases, in particular in foodstuff production, the fact whether or not certain products were made from blocks is not one of those cases. Consumers would not expect this information to be displayed on the goods as it is not a relevant characteristic of the goods and in any event, they would not assume that such information would be indicated in the form of the word ‘makeblock’, which can hardly be translated as ‘made from blocks’. As regards the second argument of the cancellation applicant, namely that the EUTM proprietor’s software and the electronic devices are joined together to build the necessary platform for their robots, it is not clear what connection this fact has to the word ‘makeblock’.

• As regards the services in Class 41, the sign will be used to develop ‘said activity’ (by which the cancellation applicant perhaps means making of blocks) and that they are related to teaching robotics. The cancellation applicant also claims that, as regards the services, the mark informs that material is given in blocks of information enclosed in a file and is directed to teach how to program (using blocks). The Cancellation Division will interpret these arguments as that ‘to make blocks’ could be the subject matter of the services in Class 41, an argument that could also apply to computer programs and downloadable publications in Class 9.

• Admittedly (and as shown by the cancellation applicant in Annexes 4, 5 and those regarding software and painting programs) instructive texts may concern the activity of block making. On the other hand, it is also shown by these documents that in such cases the word ‘makeblock’ would not be used to describe the subject matter of these texts but instead, the more comprehensible description would be used, such as ‘how to make blocks’, normally also including a more specific information as to the nature of the blocks. Making of blocks is such a specific activity that consumers would not expect there to be some type of descriptive shortcut for the entire field of block making such as ‘makeblock’, and, at the same time, they would also not expect the grammatically incorrect expression ‘makeblock’ to be the description of the subject matter of the particular publication or seminar. The cancellation applicant also provided several documents which show that ‘make block’ or ‘makeblock’ can be a function or command in some programming languages or drawing programs (the function, seemingly, allows users to combine several commands or drawings into a group which then can be used at other places in the same program where the same sequence of commands or drawings is needed). However, since there is no category of programs that would be characterized by this function and it was also not demonstrated that it could be a relevant characteristic of a program or programming language, from the perspective of the relevant public, that it includes such a function, it cannot be concluded that the word ‘makeblock’ is descriptive of any characteristic of such goods. Furthermore, it must be noted that the contested mark is not a word mark but includes a figurative element in the form of the letter ‘O’ stylized as a gear wheel. A gear wheel has no relationship to software or making of blocks and its presence in the mark further contributes to its inherent non-descriptive capacity.

• Consequently, the contested mark will be perceived as a trade mark (albeit perhaps an allusive trade mark) rather than as an indication of the subject matter of the contested services and software or downloadable publications.

• The fact that blocks of stones and other materials can be built in computer games such as ‘Minecraft’ lacks any relevance for the present case. The fact that an expression is used in some contexts of life does not automatically render that expression descriptive. In the present case, it is not clear to the Cancellation Division what is the connection between creating of blocks in computer games and the contested trade mark. Similarly, the fact that the expression ‘make a block’ may mean an instruction to drive around the block, is irrelevant for the present case as there is clearly no relationship between this meaning and the contested goods and services.

• The expression in question is imprecise in relation to the contested goods and services and remains in the suggestive area. The connection between the contested mark and the goods and services concerned is sufficiently vague and ambiguous. The meaning which could be attributed to the combination of words ‘make’ and ‘block’ does not involve any specific feature of the goods or services concerned. Furthermore, as already mentioned above, the contested mark includes a figurative element in the form of the letter ‘O’ stylized as a gear wheel. A gear wheel’s relationship to the contested goods and services is non-specific or altogether non-existent. The mark must be assessed as a whole and, in addition to the fact that the word element is not descriptive, the figurative element shifts the mark even further away from a descriptive area. The consumers, both professionals and general public, may, at most, perceive in this word, in relation to the contested goods and services, a reference to blocks, but the mark as a whole will not be perceived as an actual description of the goods or services or any of their characteristics.

• Considering all the above, it is concluded that at the relevant date, there was not, inherently, any sufficiently direct relationship between the contested mark and the goods and services in question. Contrary to the cancellation applicant’s arguments, the contested mark does not obviously and directly refer to the purpose or any other characteristics of the contested goods and services. The mark does not designate an easily recognizable and specific property of the contested goods and services.

Article 7(1)(b) EUTMR

• The cancellation applicant’s arguments regarding lack of distinctiveness of the EUTM are the same as those mentioned above and they are based on the assumption that the contested sign is descriptive. However, as has been seen above, descriptiveness of the contested sign for the goods and services mentioned above cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness as regards those goods and services.

• The cancellation applicant also argues that the expression ‘make a block’ is known to English speakers and that it is a common one, and, therefore, the mark lacks distinctiveness. However, the mere fact that an existing expression may be recognized in a mark does not lead, in itself, to the mark being devoid of distinctive character. In the present case, it was explained above that there is no sufficiently direct and specific link between the mark and the contested goods and services and the Cancellation Division sees no other reason why the contested mark could not be able to fulfil its essential function and identify the commercial origin of the goods and services for which it is registered.

• Consequently, the cancellation applicant failed to prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the registered goods and services and the application for a declaration of invalidity must be rejected also insofar as it was based on this ground.

Article 7(1)(e) EUTMR

• The contested mark was filed on 4 December 2015. The applicable Regulation is, therefore, the one that was effective at that time, namely Council Regulation No 207/2009. According to Article 7(1)(e) of Regulation No 207/2009, the following cannot be registered:

Signs which consist exclusively of

(i)	the shape which results from the nature of the goods themselves;
(ii)	the shape of goods which is necessary to obtain a technical result;
(iii)	the shape which gives substantial value to the goods.

• It is evident that at the time of its filing, the contested mark could only have been refused registration (as far as this provision is concerned) if it consisted of a shape. If it consisted of ‘another characteristic’, resulting from the nature of the goods, necessary to obtain a technical result or giving substantial value to the goods, this was not a reason for rejecting an EUTM application. Therefore, the cancellation applicant’s arguments regarding Article 7(1)(e) EUTMR are irrelevant, as they concern scenarios in which the contested mark consists of ‘another characteristic’ and this was not a condition for the registrability of a trade mark at the time when the contested mark was filed (and registered).

• Since the contested mark clearly does not consist exclusively of a shape, it is evident that it does not fall short of the standard of Article 7(1)(e) of the EUTMR which was in effect at the time of filing of the contested mark and which is, therefore, applicable to the present case.

Article 7(1)(g) EUTMR

• The cancellation applicant argues that consumers, on account of the presence of the word ‘block’ in the trade mark, will expect the contested goods and services to involve blocks and will be misled if this is not the case.

• As explained above, there is no clear, objective and sufficiently specific message conveyed by the contested mark as a whole that would have any connection with the goods and services for which the mark is registered. Therefore, since consumers do not have any specific expectations upon encountering the mark, they cannot be deceived.

• Even if it was considered that the presence of the term ‘block’ in the mark will cause the consumers to expect the contested goods and services be somehow connected to ‘blocks’, this would not lead to the conclusion that the mark can mislead the public. When broad categories of goods are registered and use of the mark could be deceptive for only some of the goods within the categories, whilst not for other goods within the same categories, the mark as such is not considered to be deceptive. It is in general assumed that the mark will be used in a non-deceptive manner. In other words, Article 7(1)(g) EUTMR does not apply if the specification has broad categories that include goods or services for which use of the trade mark would be non-deceptive. The word ‘block’ is a rather vague reference, and a relationship between the contested goods and services and ‘block’ is no further defined, so that if an expectation is created, it would be a very loose one. The contested goods and services are either defined as such broad categories that they could contain goods or services related to blocks and, thus non-deceptive use is possible, or they are so far away removed from any notion of blocks (e.g. girders, circuit boards or remote control apparatus to name a few) that there is no potential of deception of consumers, who will clearly understand that the given product has no connection to any block and they will perceive the mark as a purely fanciful sign with no relation to any of the characteristics of the goods or services concerned. In either of the cases, Article 7(1)(g) EUTMR does not apply.

• Considering the above, the application for a declaration of invalidity must be rejected.

6. On 19 May 2020, the cancellation applicant filed an appeal against the contested decision, requesting that the decision be partially set aside to the extent that the cancellation of the goods and services in Classes 9 and 41 was rejected. The statement of grounds of the appeal was received on 22 July 2020.

7. In its response received on 28 September 2020, the EUTM proprietor requested that the appeal be dismissed.

Submissions and arguments of the parties

8. The arguments raised in the statement of grounds by the cancellation applicant may be summarised as follows:

• As regards the dictionary definition of ‘make’ and ‘block’, the combination of those words has a number of meanings. In particular, ‘block’ means more than just ‘a solid piece of hard material’ as stated by the Cancellation Division.

• The purpose of the products and services offered by the trade mark owner is to build and to teach how to build machines by joining pieces of blocks. ‘Makeblock’ means ‘make a block’ and can be associated with the idea of joining blocks together to form something. In the teaching and programming sector, the meaning of ‘makeblock’ refers to ‘block programming systems’, instructions, expressions or tools in ‘Scratch’, ‘Tynker’, ‘Minecraft’ and other computer programs, block calculation used in mathematics etc.

• With the term ‘makeblock’, the relevant consumer does not understand to ‘build blocks’ but to join a portion of something together to get a different product. In the context of the goods in Class 9, this means that the ‘makeblock’ products use a concrete programming language where the principal instruction is to ‘make a block’. In relation to the services in Class 41, ‘makeblock’ refers to teaching and training services to develop said activity.

• The connection between the meaning of ‘makeblock’ and the Class 9 goods is straightforward, as the following packaging illustrates:

• Being confronted with this ‘makeblock’ product the consumer will immediately think of building something with blocks or join blocks together to make something. This meaning is also further illustrated by the slogans on the packaging ‘construct your dreams’ or ‘learn electronics and programming without the pain of wiring’.

• As regards Article 7(1)(b) EUTMR, it is sufficient to add that a merely descriptive sign under Article 7(1)(c) EUTMR is automatically also devoid of any distinctiveness under Article 7(1)(b) EUTMR.

• As regards Article 7(1)(g) EUTMR, the reasoning of the Cancellation Division is contradictory and actually only confirms that the trade mark is purely descriptive under Article 7(1)(c) EUTMR.

• The cancellation applicant refers to the arguments, facts and evidence submitted before the Cancellation Division.

• Additional evidence is submitted together with the statement of grounds (Annexes I-XI, dictionary definitions of ‘make’ and ‘block’ and various Internet excerpts, in particular relating to ‘Scratch’, ‘Tynker’, ‘Minecraft’, ‘JavaScript, ‘AutoCAD’, a coding platform and a specific mathematical method).

9. The arguments raised in reply to the appeal by the EUTM proprietor may be summarised as follows:

• The evidence submitted for the first time before the Board of Appeal is belated and should be disregarded.

• The trade mark is not purely descriptive under Article 7(1)(c) EUTMR. As pointed out in the contested decision, the fact that an expression such as ‘make a block’ or ‘make block’ is used in some contexts of life does not automatically render that expression descriptive.

• The words ‘make’ and ‘block’ put together do not lead to any objective and sufficiently specific meaning that would describe any real characteristic of the goods and services. In particular, it is not feasible that consumers would perceive the word ‘makeblock’ as an indication of a method through which the goods were made. The word combination is vague and lacks any clear meaning.

• Moreover, the figurative element of the mark further contributes to its inherent non-descriptive meaning.

• Since the mark is not purely descriptive, the reasoning of the cancellation applicant that the mark was non-distinctive under Article 7(1)(b) because of its allegedly descriptive character cannot succeed.

• The absolute grounds for invalidity under Article 59(1)(a) EUTMR in combination with Article 7(1)(g) and (e) EUTMR are also inapplicable.

• The EUTM proprietor refers to the arguments, facts and evidence submitted before the Cancellation Division.

Reasons

10. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

11. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

12. The appeal is, however, not well founded, for the reasons indicated below.

Scope of the appeal

13. The cancellation applicant explicitly limited the appeal to the rejection of the application for a declaration of invalidity for the contested goods and services in Classes 9 and 41. The subject matter of this appeal is therefore also limited to those goods and services. The decision of the Cancellation Division has become final and binding as far as the Cancellation Division rejected the request for a declaration of invalidity for the contested goods in Class 6.

Belated evidence

14. The cancellation applicant submitted additional documents supporting the alleged absolute grounds for invalidity together with its statement of grounds (Annexes I‑XI). According to Article 95(2) EUTMR, the Office may disregard evidence which is not submitted in due time by the party concerned.

15. Pursuant to Article 27(4) EUTMDR, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements: (a) they are, on the face of it, likely to be relevant for the outcome of the case; and (b) they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.

16. Applying the aforesaid criteria for exercising the discretion under Article 95(2) EUTMR, the Board of Appeal has decided to accept the documents. The material merely supplements the relevant evidence submitted before the Cancellation Division in due time. Moreover, the documents presented in the appeal proceedings are, on the face of it, relevant for the outcome of the case.

On the examination of the absolute grounds for invalidity

17. Pursuant to Article 59(1)(a) EUTMR, a European Union trade mark shall be declared invalid on application to the Office where the European Union trade mark has been registered contrary to the provisions of Article 7 EUTMR.

18. When the Office examines a trade mark application on absolute grounds, it must take into consideration all the relevant facts and circumstances and it cannot carry out an abstract examination. The Office must consider the characteristics peculiar to the mark for which registration is sought and, in the case of a word mark, its meaning, in order to ascertain whether or not any of the grounds of refusal set out in Article 7 EUTMR are applicable. Moreover, the Office must assess the mark by reference to the specific goods or services (12/02/2004, Postkantoor, C‑369/99, EU:C:2004:86, § 31-35; 15/09/2005, Live richly, T‑320/03, EU:T:2005:325, § 83) and taking into consideration the perception of the relevant public (see 09/10/2020, T-360/00, UltraPlus, EU:T:2002:244, § 43; 29/04/2004, C-473/01 P and C-474/01 P, Tabs, EU:C:2004:260, § 33; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

19. When examining absolute grounds for refusal, the Boards of Appeal are required to examine the facts of their own motion in order to determine that the mark for which protection is sought comes within one of the grounds of refusal of registration set out in Article 7 EUTMR. The Office cannot be required to carry out afresh the examination which the examiner conducted, of his or her own motion, as regards the relevant facts which could have led him or her to apply the absolute grounds for refusal within the invalidity proceedings (28/09/2016, T‑476/15, FITNESS, EU:T:2016:568, § 46-47). Indeed, it follows from the joint reading of the rules currently contained in Articles 59 and 62 EUTMR that the EU trade mark is regarded as valid until it has been declared invalid by the Office following invalidity proceedings and, as such, a registered mark enjoys a presumption of validity (28/09/2016, T-476/15, FITNESS, EU:T:2016:568, § 47 and case-law thereby cited). In invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before the Office the specific facts which call the validity of that trade mark into question. It follows from the foregoing that, in the invalidity proceedings, the Cancellation Division and the Boards of Appeal are not required to examine of their own motion the relevant facts which might have led them to apply the absolute ground for refusal set out in Article 7 EUTMR (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 27-29).

20. Nonetheless, the Office may further take into account facts, which were well known, that is, which were likely to be known to anyone or which may have been learnt from generally accessible sources (22/06/2004, T-185/02, Picaro, EU:T:2004:189, § 29; 13/04/2011) before the registration of the trade mark subject to declaration of invalidity was sought (20/07/2016, T-11/15, SUEDTIROL, EU:T:216:422, § 40). Moreover, elements which are subsequent to the date on which the EUTM application was lodged may be considered if they allow conclusions regarding the situation that existed at the date to be drawn (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41).

Article 59(1)(a) EUTMR in conjunction with Article 7(1)(c) EUTMR

21. Pursuant to Article 7(1)(c) EUTMR in conjunction with Article 52(1)(a) EUTMR, 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 are to be declared invalid.

22. The descriptiveness of the sign must be assessed by reference, first, to the goods or services for which registration is sought and, second, to the perception of the relevant public, namely the consumers of the goods or services (02/04/2008, T‑181/07, Steadycontrol, EU:T:2008:362, § 38).

The relevant public

23. The contested goods and services are computer programs, remote control apparatus, teaching apparatus, data processing equipment such as microprocessors, electronic sensors, detectors, integrated circuit cards and inductors, downloadable electronic publications and printed circuit boards in Class 9 and organization of competitions and exhibitions for cultural or educational purposes, publication of texts, books, electronic books and journals on-line, writing of texts, services of academies and schools [education] and education information, teaching and other educational services, coaching and practical training, arranging and conducting of workshops and symposia and instruction services in Class 41.

24. The goods and services objected to are aimed at both the general public and professional users (e.g. computer specialists, academics or professional trainers).

25. The average consumer’s level of attention is likely to vary according to the category of goods or services in question (see, by analogy, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the case at hand, some of the goods are inexpensive products bought and used on a regular basis (e.g. remote controls or simple software programs). The attention of the public is not higher than average. Some of the goods are more expensive and require technical know-how (e.g. microprocessors). The public is more attentive in relation to those goods. Finally, as regards the contested services, the degree of attention varies between normal and enhanced, depending on, e.g. the audience and topic of the services.

26. Pursuant to Article 7(2) EUTMR, a sign shall not be registered if it is ineligible for protection with regard to only part of the European Union. As the trade mark applied for is an expression made up of English words, account must be taken of the public in the English-speaking territory of the European Union, namely in the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection.

The descriptive character of the trade mark

27. Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications which describe the categories of goods or services in respect of which registration is applied for remain available. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (04/05/1999, C‑108/97 and C‑109/97, Chiemsee, EU:C:1999:230, § 24-25; 08/04/2003, C‑53/01, C-54/01 and C-55/01, Linde, EU:C:2003:206; 06/05/2003, C-104/01, Libertel, EU:C:2003:244;12/02/2004, C-265/00, Biomild, EU:C:2004:87).

28. Consequently, for a sign to fall within the scope of the prohibition of that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40 upheld on appeal by 05/02/2004 C-150/02 P, Streamserve, EU:C:2004:75, 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

29. A sign must be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (see 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 30-31 and 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).

30. In the case of compound signs, the relevant meaning, established on the basis of all the constituent elements of those signs and not only on the basis of one of them, must be taken into account. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (25/10/2007, C‑238/06 P, Plastikflaschenform, EU:C:2007:635, § 82).

31. The EUTM proprietor’s mark is a figurative mark with word and figurative elements. It consists of the English words ‘Make’ and ‘block’, written together as one word in dark letters. The letter ‘O’ of the second word is substituted by a gear device: .

32. The word ‘make’ means, in particular, ‘create’, ‘compose’, ‘draw up’, ‘perform’, ‘prepare’ or ‘arrange’ (www.lexico.com/definition/make, Annex I of the cancellation applicant’s statement of grounds). A ‘block’ is, in particular, ‘a large solid piece of hard material’, ‘a large single building’, ‘a large quantity of things’ (‘a block of shares’, ‘a block of text’), or ‘an obstacle to the normal progress (‘this is a block to career advancement’) (www.lexico.com/definition/block, Annex II of the cancellation applicant’s statement of grounds). Thus, the combination of ‘make block’ will be understood as an invitation or request ‘to create or construct a block’ (e.g. a solid piece of glass, wood, concrete; a building, a block of text etc.).

33. For a sign to be rejected as descriptive, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40).

34. In the case at hand, the cancellation applicant has not shown that the relevant English-speaking public will make a sufficiently direct mental link between the meaning of ‘make block’ and goods such as computer programs, remote control apparatus, teaching apparatus, data processing equipment such as microprocessors, electronic sensors, detectors, integrated circuit cards and inductors, downloadable electronic publications and printed circuit boards in Class 9. None of those goods are ‘blocks’. And there are no indications that any of the listed goods serve to ‘make a block’.

35. As regards computer programs, it is true that a ‘block’ might be understood as a ‘subroutine’, a ‘code collection’ or a ‘command’ of a computer language. However, the fact that computer programs consist of subroutines, codes, commands or functions does not mean that the term ‘make a block’ describes any characteristic (like the type or purpose) of the computer program itself. Nothing indicates that there exists a category of computer programs that have the purpose to ‘make blocks’, e.g. to specifically create subroutines as a part of a computer program. There are computer programs that allow users to create stories, games or music in a simple way by assembling units of codes called ‘blocks’ instead of writing each code (e.g. ‘Tynker’, ‘Scratch’, ‘Snap!’). However, even in relation to those software programs, the meaning of ‘make block’ does not make any sense. Those software programs belong to the category of ‘software development kits (SDK)’ and their purpose is not to ‘make blocks’, but to create animations, interactive stories etc.

36. The cancellation applicant also emphasises that there exists a computer game called ‘Minecraft’ that allows users to explore and create an artificial world composed of rough 3D objects in the form of cubes that represent various materials such as stone, wood, lava, glass, water etc. In the game, those cubes are called ‘blocks’. Software development kits such as ‘Tynker’ can be used to edit or customize ‘Minecraft blocks’. However, the fact that there exists a very specific SDK on the market, which includes as one of its endless functions the possibility to customize ‘blocks’ of another very specific game (‘Minecraft’), does not mean that the word sequence ‘make block’ is descriptive for software. There is no sub-category of software dealing with making blocks. Even for ‘block-based’ SDKs as described above, the word sequence ‘make block’ is not descriptive because the purpose of SDK is not to make blocks but to create new content (games, tools, apps etc.). The game ‘Minecraft’ belongs to the category of ‘sandbox games’ (i.e. games that encourage free play and are characterised by great freedom to explore and construct) and its purpose is not to ‘make blocks’ but to create and explore an artificial world.

37. As regards the services in Class 41, the cancellation applicant has not demonstrated that the term ‘makeblock’ would be understood as referring to any ‘characteristics’ in the meaning of Article 7(1)(c) EUTMR for the organization of competitions and exhibitions for cultural or educational purposes, the publication of texts, books, electronic books and journals on-line, the writing of texts, services of academies and schools [education] and education information, teaching and other educational services, coaching and practical training, arranging and conducting of workshops and symposia or instruction services. None of the aforementioned services includes a sub-category dealing with ‘making blocks’. The purpose of those services is to teach, train, publish texts etc. but not to make blocks.

38. The cancellation applicant refers to specific examples of ‘making block activities’, for example, an instruction leaflet ‘how to make wooden blocks’ (Annex IV of the brief of 23 July 2018) or the report of a teacher demonstrating to school children how to make concrete blocks (Annex V of the brief of 23 July 2018). However, these very specific examples do not demonstrate that ‘making blocks’ would be understood as any characteristics of teaching or educational services or the publication of texts. The examples refer to single, very specific activities and do not show that ‘making blocks’ would be perceived as a sub-category of any of the registered services in Class 41 or describe their purpose.

39. There is insufficient evidence that the contested mark was actually used on the market to describe any characteristics of the goods and services in Classes 9 or 41 at the time of the filing date (4 December 2015). Moreover, from the documents submitted by the cancellation applicant, it cannot be assumed that the public perceived the sign as a mere indication of the kind, the purpose or other characteristics of the goods and services at that time (compare to 04/05/1999, C‑108/97 and C‑109/97, Chiemsee, EU:C:1999:230).

40. The cancellation applicant alleges that the goods and services offered by the EUTM proprietor on the market show the descriptiveness of the contested mark for the goods and services in Classes 9 and 41. The Board of Appeal has reviewed the documents submitted by the cancellation applicant in that respect but could not detect any relation between the meaning of the term ‘makeblock’ and the EUTM proprietor’s relevant goods and services. For example, there are no indications that the public would understand ‘makeblock’ in a merely descriptive meaning when being confronted with the goods depicted on the following packaging:

41. First, the products depicted on the packaging are not ‘blocks’ but seem to show various sensors, adaptors, a joystick, a remote control and an electronic unit in the centre. Nothing suggests that any of those electronic devices would be described as ‘block’. Second, the purpose of the product depicted in the image is not to ‘make a block’ but to help children to understand electronics and robotics and to create simple electronic or robotic devices.

42. The Board of Appeal points out that the contested mark does not consist of the word ‘block’ alone but is a combined term ‘makeblock’ which will be understood as an invitation, request or statement to ‘make a block’ or to ‘make blocks’. The cancellation applicant has not demonstrated a directly descriptive link between the meaning of that statement and the goods and services at issue. At most, the mark might be suggestive in the sense that some of the goods and services are vaguely related to ‘blocks’ but the combined sign is not merely descriptive pursuant to Article 7(1)(c) EUTMR.

43. Under these circumstances, the figurative gear device supports the conclusion that the trade mark as a whole is not descriptive under Article 7(1)(c) EUTMR. The figurative element is not a simple geometrical shape and does not underline the message conveyed by the words ‘makeblock’. The relation between a gear device and the invitation to ‘make block’ is not clear. To sum up, the trade mark as a whole passes the threshold of a merely descriptive (and not acceptable) sign to a possibly suggestive (but acceptable) trade mark.

Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR

44. Each of the grounds for refusal listed in Article 7(1) EUTMR is independent of the others and calls for a separate examination (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 39; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). Furthermore, the various grounds for refusal must be interpreted in light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue (29/04/2004, C-456/01 P and C-457/01 P, Tabs, EU:C:2004:258, § 45-46; 02/07/2002, T-323/00, SAT.2, EU:T:2002:172, § 25).

45. Each of the absolute grounds for refusal connected with lack of distinctiveness, descriptiveness and customary usage has its own sphere of application and they are neither interdependent nor mutually exclusive (29/04/2004, C-456/01 P and C‑457/01 P, Tabs, EU:C:2004:258, § 45-46). Even if those grounds are applicable separately, they may also be applied cumulatively.

46. According to Article 7(l)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered. According to Article 7(2) EUTMR, Article 7(l)(b) EUTMR shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

47. According to settled case-law, the marks referred to in Article 7(1)(b) EUTMR are those which 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 at issue, thus enabling the consumer who acquired the goods or services covered by the mark 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 (29/09/2009, T-139/08, Smiley, EU:T:2009:364, § 14).

48. The distinctive character of a trade mark, just as its descriptive character, must be assessed, first, by reference to the goods and services, in respect of which registration has been applied for and, second, by reference to the perception of the relevant public. The statements made above apply in respect of the targeted public and their level of attention (see above paras 23-26).

49. The Board of Appeal shares the view of the Cancellation Division that the contested trade mark is indeed capable of distinguishing the goods and services in Classes 9 and 41 in terms of their origin. As shown above, the mark does not describe any characteristics of the goods and services (see above para. 27-43). Moreover, there are no indications that the targeted public would perceive the mark as a purely laudatory message, or as a merely factual or social statement. The figurative gear device supports this conclusion (see above para. 43).

50. It follows that the absolute ground for cancellation under Article 7(1)(b) EUTMR in conjunction with 7(2) EUTMR is not applicable.

Article 59(1)(a) EUTMR in conjunction with Article 7(1)(e) EUTMR

51. The contested mark was filed on 4 December 2015 and registered on 17 March 2016. Regulation 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which included changes of Article 7(1)(e) CTMR, entered into force on 23 March 2016, i.e. after the registration of the mark at issue. Regulation 2015/2424 is not applicable to marks registered before the entry into force of the new Regulation (14/03/2019, C‑21/18, Textilis, EU:C:2019:199, § 33).

52. Article 7(1)(e) CTMR provided three circumstances where an objection to registration might arise. They apply to signs which consist exclusively of:

1. the shape which results from the nature of the goods themselves;

2. the shape of goods which is necessary to obtain a technical result;

3. the shape which gives substantial value to the goods.

53. Since the contested mark does not have any ‘shape’, Article 7(1)(e) CTMR is not applicable.

Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR

54. Under Article 7(1)(g) EUTMR, the registration is to be refused for trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

55. According to settled case-law, the circumstances for refusing registration referred to in Article 7(1)(g) EUTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived. The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality. However, a mark loses that role where the information it contains is of such a nature as to deceive the public (see judgment 05/05/2011, T‑41/10, esf école du ski français (fig.), EU:T:2011:200, § 49-50 and the case-law cited).

56. The cancellation applicant does not put forward any argument challenging the reasoning of the Cancellation Division that the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived has not been established in relation to the goods and services at issue. According to the cancellation applicant, the reasoning of the Cancellation Division was contradictory because it admits, on the one hand, that the contested goods include very broad categories among which goods with a certain connection to blocks may exist, and states, on the other hand, that it is sufficient for confirming Article 7(1)(c) EUTMR that the mark was purely descriptive in at least one of its possible meanings. If it is true that the broad categories of the goods include products with a certain connection to ‘blocks’, then the sign is describing those specific goods falling under the general categories.

57. The Board of Appeal shares the view of the Cancellation Division that the contested mark does not actually deceive the consumers and that there is no serious risk that the public will be deceived when being confronted with the trade mark for the registered goods and services in Classes 9 and 41. As explained above, the mark might at the most be perceived as being vaguely allusive in relation to some of the goods and services in the sense that they might have something to do with ‘blocks’ (e.g. building blocks, virtual blocks or computer code units). However, the mark as a whole does not trigger a perception in the mind of the public that it would describe any characteristics of those goods or services. For example, when being confronted with the trade mark in relation to the publication of texts or training services, the consumers are very unlikely to assume that they will be taught how to ‘make a block’ and then be disappointed or feeling ‘deceived’ when they learn that the training or publication is actually about other topics. The cancellation applicant has failed to explain (let alone to demonstrate) how the mark could actually deceive the public or create a serious risk of such a deception.

58. To summarise, it has not been demonstrated by the cancellation applicant that any of the claimed absolute grounds for cancellation is applicable to the contested trade mark. Consequently, the appeal is dismissed.

Costs

59. Since the appeal is dismissed and the cancellation applicant is the losing party within the meaning of Article 109(1) EUTMR, it shall be ordered to bear the costs incurred by the EUTM proprietor in the cancellation and appeal proceedings.

60. In accordance with Article 109(7) EUTMR and Article 18(1)(c)(iii) EUTMIR the Board fixes the amount of representation costs to be paid by the cancellation applicant to the EUTM proprietor for the appeal proceedings at EUR 550.

61. As to the cancellation proceedings, the Cancellation Division ordered the cancellation applicant to bear the EUTM proprietor’s representation costs which were fixed at EUR 450. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 000.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the cancellation applicant to bear the EUTM proprietor’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the cancellation applicant to the EUTM proprietor in the cancellation and appeal proceedings is EUR 1 000.

Signed V. Melgar

Signed A. Pohlmann

Signed C. Govers

Registrar: Signed H.Dijkema