JUDGMENT OF THE GENERAL COURT (First Chamber)
9 October 2018 (*)
(EU trade mark — Application for the EU word mark COOKING CHEF GOURMET — Absolute ground for refusal — No distinctive character — Article 7(1)(b) and Article 7(2) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and Article 7(2) of Regulation (EU) 2017/1001))
In Case T‑697/17,
De Longhi Benelux SA, established in Luxembourg (Luxembourg), represented by M. Arnott and A. Nicholls, Solicitors, and G. Hollingworth, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 24 July 2017 (Case R 231/2017-1) concerning the application for registration of the word sign COOKING CHEF GOURMET as an EU trade mark,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 October 2017,
having regard to the response lodged at the Court Registry on 17 January 2018,
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
Background to the dispute
1 On 15 June 2016, the applicant, De Longhi Benelux SA, 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)).
2 The mark in respect of which registration was applied for is the word sign COOKING CHEF GOURMET.
3 The goods in respect of which registration was sought are in Classes 7 and 11 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 to the following description:
– Class 7: ‘Electric food mixers incorporating an induction cooking (heating) element; attachments for the aforesaid electric food-mixers, all for blending, liquidising, pureeing, mashing, mixing, pulping, kneading, rolling, grinding, mincing, chopping, slicing, grating, shredding, peeling, cutting, crushing, sieving, beating and whisking of foodstuffs; blades adapted to fit the aforesaid electric food mixers; mixing bowls and blender jugs adapted to fit the aforesaid electric food mixers; parts and fittings of the aforesaid electric food mixers, namely electric motors’;
– Class 11: ‘Induction cooking apparatus incorporating a food mixing or a food processing function’.
4 By decision of 30 November 2016, the examiner refused the trade mark application, pursuant to Article 7(1)(b), read in conjunction with Article 7(2) of Regulation No 207/2009 (now Article 7(1)(b) and Article 7(2) of Regulation 2017/1001) for all of the goods referred to in paragraph 3 above.
5 On 30 January 2017 the applicant filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
6 By decision of 24 July 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. First, it decided, as regards the relevant territory, to restrict its analysis to the English-speaking part of the territory of the European Union and noted, as regards the relevant public, that it consisted of both the general public, made up of average consumers who are reasonably well informed, observant and circumspect and the specialised public in the restaurant sector. Next, after noting the meaning of each of the word elements of the mark applied for, the Board of Appeal stated that those elements described the purpose of the goods concerned, were laudatory and were commonly used to described food and drink, with the result that they would not be perceived as an indication of the commercial origin of the goods. The Board of Appeal concluded that the mark applied for was inherently devoid of distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, under Article 7(2) of that regulation.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those incurred in the proceedings conducted before the Board of Appeal.
8 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
9 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. That plea in law is divided into three parts alleging, in essence, first, an error of assessment concerning the inherent distinctive character of the mark applied for, second, an error of assessment concerning the level of attention of the relevant public and, third, an error of assessment concerning the distinctive character of the mark applied for associated with the reputation of the applicant’s earlier mark CHEF.
10 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character are not to be registered. Under Article 7(2), registration of a mark must be refused even if the absolute grounds for refusal exist only in part of the European Union.
11 For the trade mark applied for to possess distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods and services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited, and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42 and the case-law cited).
12 In that regard, it should be noted that the signs devoid of distinctive character referred to in Article 7(1)(b) of Regulation No 207/2009 are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them 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 (judgment of 27 February 2002, REWE-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26; see, also, judgment of 3 September 2015, iNET 24 Holding v OHIM(IDIRECT 24), T‑225/14, not published, EU:T:2015:585, paragraph 43 and the case-law cited).
13 The distinctive character must be assessed, first, by reference to the goods or services in respect of which registration was sought and, second, by reference to the perception of the relevant public (see judgment of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43 and the case-law cited). The level of attention of the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, varies according to the category of the goods and services in question (judgment of 10 October 2007, Bang & Olufsen v OHIM (Shape of a loudspeaker), T‑460/05, EU:T:2007:304, paragraph 32).
14 In that regard, a minimum degree of distinctive character is sufficient to render inapplicable the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (see judgment of 25 September 2015, BSH v OHIM (PerfectRoast), T‑591/14, not published, EU:T:2015:700, paragraph 40 and the case-law cited).
15 As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use (judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41, and of 21 January 2010 in Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35). As regards the assessment of the distinctive character of such marks, the Court of Justice previously held that it was inappropriate to apply to them criteria which are stricter than those applicable to other signs (judgments of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraphs 32 and 44 and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36).
16 Those marks convey by definition, to a greater or lesser extent, an objective message and may be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (judgment of 21 January 2010 in Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57; see also, to that effect, judgment of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 23).
17 It is in the light of the rules recalled in paragraphs 10 to 16 above that the Court must examine whether the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 by finding that the mark applied for was devoid of any distinctive character.
The first part, alleging an error of assessment concerning the inherent distinctive character of the mark applied for
18 First, the applicant claims that the Board of Appeal incorrectly applied the principles established by the case-law of the Court of Justice and of the General Court regarding the assessment of the mark as a whole and the minimum degree of distinctive character required. The applicant submits that the Board of Appeal failed to analyse the overall impression given by the mark applied for, which has distinctive character.
19 Next, the applicant maintains that, although the Board of Appeal based the contested decision on Article 7(1)(b) of Regulation No 207/2009, the statement in points 15 and 16 of the contested decision, to the effect that the relevant public would understand the words comprising the mark applied for as a description of the purpose of the goods concerned, rests essentially on the substantive conditions laid down in Article 7(1)(c) of that regulation, based on the descriptive nature of the mark with regard to the goods in question.
20 Finally, although the applicant does not dispute the meaning of the words comprising the mark applied for applied by the Board of Appeal, it claims that the mark applied for, as a whole, has no meaning. According to the applicant, the combination of words comprising the mark applied for does not follow English grammatical rules and requires at least some thought on the part of the relevant public, with the result that the mark applied for at most alludes to the purpose of the goods concerned.
21 EUIPO disputes the applicant’s arguments.
22 In the first place, as regards the applicant’s argument that the Board of Appeal used an incorrect method of analysis in carrying out an individual examination of the words which compose the mark applied for, it must be borne in mind that, in the case of compound word signs, such as that in the present case, the overall impression given by the mark must be taken into consideration. That does not mean, however, that one may not start by examining each of the individual features which make up the mark applied for. Thus, in the course of an overall assessment of the mark, it may be useful to examine each of the components of which it is made up (see judgment of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 50 and the case-law cited; judgment of 23 October 2017, Barmenia Krankenversicherung v EUIPO (Mediline), T‑810/16, not published, EU:T:2017:749, paragraph 22).
23 In the present case, it must be noted that the Board of Appeal, in point 14 of the contested decision, examined the meaning of the words ‘cooking’, ‘chef’ and ‘gourmet’ respectively. Nevertheless, contrary to what the applicant claims, the Board of Appeal then considered the meaning of the combination of those words and concluded, in points 16 and 17 of the contested decision, that the relevant public would understand that expression as a laudatory indication that the goods concerned are capable of preparing fine food and drinks, as a cook would be.
24 The Board of Appeal then proceeded to examine the overall impression given by the word sign COOKING CHEF GOURMET and concluded that the applicant’s argument in that regard has no basis in fact.
25 In the second place, it must be noted that there is a degree of overlap between the scope of the absolute grounds for refusal of a mark set out in Article 7(1)(b) and those in Article 7(1)(c) of Regulation No 207/2009, Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see judgment of 7 September 2017, VM v EUIPO — DAT Vermögensmanagement (Vermögensmanufaktur), T‑374/15, EU:T:2017:589, paragraph 97 (not published) and the case-law cited).
26 When, in the field covered by the mark, the relevant public perceives a sign as providing information on the nature of the goods or services which it designates, and not as indicating the origin of the goods and services in question, the mark does not fulfil the conditions laid down in Article 7(1)(b) of Regulation No 207/2009 (see judgment of 29 April 2010, Kerma v OHIM (BIOPIETRA), T‑586/08, not published, EU:T:2010:171, paragraph 22 and the case-law cited).
27 In those circumstances, the Board of Appeal did not fail to take into account Article 7(1)(c) of Regulation No 207/2009 when it found that the mark applied for lacked distinctive character on account of the fact that it would be perceived by the relevant public as a promotional message describing the purpose of the goods, and not as an indication of the commercial origin of the goods.
28 In the third place, as regards the applicant’s argument that the mark applied for has no meaning since its structure differs from ordinary English syntax, which therefore gives it at least some distinctive character, it must be noted that the mark applied for is made up of three everyday English words, whose respective meanings are ‘cooking’, ‘chef’ and ‘gourmet’, which the applicant does not dispute.
29 Given the characteristics of the goods designated by the mark applied for, whose use is associated with cooking, the word sign COOKING CHEF GOURMET will be perceived immediately by the relevant public as a laudatory or promotional reference to the qualities and purpose of the goods concerned.
30 The mark applied for is accordingly laudatory for the sake of advertising, the purpose being to highlight the positive qualities of the goods or services for the presentation of which it is used (see, to that effect, judgments of 21 May 2015, Mo Industries v OHIM (Splendid), T‑203/14, not published, EU:T:2015:301, paragraph 21, and of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraph 38).
31 In that regard, it must be noted that the laudatory connotation of a word mark does not mean that it is not capable of providing a guarantee to consumers concerning the origin of the goods or services which it covers. Therefore, such a mark may be perceived by the relevant public at the same time both as a promotional formula and as an indication of the commercial origin of goods or services.
32 It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 30).
33 It follows that a mark consisting of a promotional formula or an indication of quality must be regarded as devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 44 and 45, of 11 December 2012, Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, not published, EU:T:2012:663, paragraph 22, and judgment of 6 June 2013, Inspired by efficiency, T‑126/12, not published, EU:T:2013:303, paragraph 24).
34 As the Board of Appeal stated in point 17 of the contested decision, the fact that the three elements comprising the word sign COOKING CHEF GOURMET are juxtaposed does not mean that the mere omission of an article or preposition in its structure (‘[for] cooking [like] [a] gourmet chef’) is sufficient to make it a lexical invention liable to give a distinctive character to that sign (see, to that effect, judgment of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 32).
35 Thus, the group of words ‘cooking chef gourmet’ as a whole does not entail, grammatically or syntactically, any perceptible difference as regards the construction of a sentence that will be understood merely as a laudatory reference to the goods concerned, which allow the relevant public to cook like a real gourmet and chef. In those circumstances, the relevant public need make no particular effort as regards interpretation in order to understand the meaning of the sign applied for.
36 Accordingly, while it is true that the combination of the word elements of the mark applied for differ from ordinary English grammatical use, it must be noted that, contrary to what the applicant claims, that fact is not capable of rendering the mark applied for ambiguous.
37 It follows that the relevant consumer will not be diverted from the clear promotional message conveyed by the mark applied for, which refers exclusively to the purpose of the goods at issue (see, to that effect, judgment of 30 November 2017, Mackevision Medien Design v EUIPO (TO CREATE REALITY), T‑50/17, not published, EU:T:2017:855, paragraph 40).
38 In the light of the foregoing, the Board of Appeal was therefore fully entitled to find that the mark applied for would not be perceived by the relevant public as an indication of the commercial origin of the goods in question.
39 The first part of the single plea in law must therefore be rejected.
Second part, alleging an error of assessment concerning the level of attention of the relevant public
40 At the outset, it must be noted that the applicant does not dispute the assessments of the Board of Appeal, in points 8 and 9 of the contested decision, to the effect that, first, the analysis may be limited, under Article 7(2) of Regulation No 207/2009 to the English-speaking part of the territory of the European Union, since the word elements of the mark applied for are English words, and, second, the relevant public is made up of the general public and the specialised public in the restaurant sector. Those findings of the Board of Appeal must be upheld.
41 By contrast, the applicant disputes, in essence, the level of attention of the relevant public. According to the applicant, the Board of Appeal failed to take into account the sophisticated and expensive nature of the goods concerned, which lead the relevant public to pay a higher level of attention.
42 EUIPO disputes the applicant’s arguments and claims, in any event, that a higher level of attention paid by the relevant public would not in any way alter the assessment of the meaning of the mark applied for with regard to the goods concerned.
43 In the present case, although some of the goods covered by the mark applied for in Classes 7 and 11 may have a relatively high purchase price and be used over a number of years, it must nevertheless be noted that most of those goods are kitchen devices, which, nowadays, do not require particular technical knowledge.
44 Moreover, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether it involves average end consumers or a more attentive public made up of specialists or circumspect consumers, even if, as in the present case, certain of the goods concerned require a relatively significant financial commitment (see judgment of 25 March 2014, Deutsche Bank v OHIM (Passion to Perform), T‑291/12, not published, EU:T:2014:155, paragraphs 32 and 33 and the case-law cited; see also, by analogy, judgment of 15 September 2005, Citicorp v OHIM (LIVE RICHLY), T‑320/03, EU:T:2005:325, paragraphs 73 and 74).
45 Accordingly, the Board of Appeal was entitled to take the view that the relevant public, made up of the general public and the specialised public, had an average level of attention with regard to the mark applied for, on account of its promotional nature.
46 Accordingly, the argument alleging an error of assessment concerning the level of attention of the relevant public is unfounded, with the result that the second part of the single plea in law must be rejected.
The third part, alleging an error of assessment concerning the distinctive character of the mark applied for linked to the reputation of the applicant’s earlier CHEF mark
47 By the third part, the applicant submits that the mark applied for already has distinctive character owing to the registration of the earlier mark CHEF by the applicant, which is widely known and has been subject to long-standing and intensive use since the 1950s. According to the applicant, since the mark applied for is a variant of the earlier mark CHEF, the relevant public is capable of attributing the mark applied for directly to the applicant and of identifying the commercial origin of the goods concerned.
48 EUIPO disputes the applicant’s arguments and submits, in that regard, that the earlier mark CHEF is the subject of cancellation proceedings.
49 In the present case, first, to the extent that the applicant claims that the mark applied for has acquired distinctive character owing to the earlier registration of the CHEF mark, that argument must be rejected as irrelevant.
50 Such an argument, which in the present case has not, in any event, been demonstrated, should have been relied on in support of a claim seeking that EUIPO recognise that the mark applied for has distinctive character acquired through use, under Article 7(3) of Regulation No 207/2009. The applicant did not rely on that circumstance before EUIPO so that that issue is irrelevant to the present dispute (judgment of 21 November 2013, Heede v OHIM (Matrix-Energetics), T‑313/11, not published, EU:T:2013:603, paragraph 62).
51 Second, and in any event, the earlier registration on which the applicant bases its argument concerns the word sign CHEF, namely a sign which differs from the sign which forms the subject-matter of the present action, which also includes the word elements ‘cooking’ and ‘gourmet’.
52 Given those differences between the two signs, the earlier registration relied on by the applicant cannot affect the lawfulness of the Board of Appeal’s finding that the mark applied for is not capable of being used to identify the commercial origin of the goods in question (see, to that effect, judgment of 24 April 2018, VSM v EUIPO (WE KNOW ABRASIVES), T‑297/17, not published, EU:T:2018:217, paragraph 60).
53 It is therefore necessary to reject the third part of the single plea in law and, accordingly, to dismiss the action in its entirety.
Costs
54 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.
55 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders De Longhi Benelux to pay the costs.
Delivered in open court in Luxembourg on 9 October 2018.