JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
26 November 2008 (*)
(Community trade mark – Application for the Community word mark NEW LOOK – Absolute ground for refusal – Lack of distinctive character acquired through use – Article 7(3) of Regulation (EC) No 40/94)
In Case T‑435/07,
New Look Ltd, established in Weymouth (United Kingdom), represented by S. Malynicz, Barrister, and M. Blair and K. Gilbert, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
ACTION against the decision of the Second Board of Appeal of OHIM of 3 September 2007 (Case R 670/2007-2), relating to the registration of the word sign NEW LOOK as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, S. Papasavvas (Rapporteur) and N. Wahl, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 29 November 2007,
having regard to the response lodged at the Registry of the Court of First Instance on 21 February 2008,
further to the hearing on 17 September 2008,
gives the following
Judgment
Background to the dispute
1 On 14 November 2002, the applicant, New Look Ltd, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 Registration as a mark was sought for the word sign NEW LOOK.
3 The goods and services in respect of which registration was sought fall within Classes 3, 4, 9, 11, 14, 16, 18, 20, 25, 26, 28, 35 and 36 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 (‘the Nice Agreement’).
4 By letter of 16 July 2004, the examiner informed the applicant that the mark applied for could not be eligible for registration for some of the goods covered by the application and in Classes 3, 9, 14, 18, 20, 25 and 26 of the Nice Agreement because it was not consistent with Article 7(1)(b) and (c) of Regulation No 40/94.
5 On 21 July 2005 the applicant submitted evidence of use of the mark applied for to show that that mark had acquired distinctiveness in the Community.
6 On 1 August 2006 the examiner maintained her objection on the grounds that that evidence was insufficient to demonstrate acquired distinctiveness of the mark applied for in the Community. Furthermore, she widened the objection to registration of the mark to include additional goods and services in Classes 16, 18 and 35 of the Nice Agreement and invited the applicant to submit further observations.
7 On 1 December 2006, the applicant applied to register a declaration of division of its Community trade mark application. That was granted on 3 January 2007. Having regard to that division, the goods and services in respect of which registration is sought fall within Classes 3, 9, 14, 16, 18, 25, 26 and 35 of the Nice Agreement and correspond, for each of those classes, to the following descriptions:
– Class 3: ‘Cosmetics and toiletries; soaps; perfumes, essential oils, shampoos and conditioners for the care of the hair; deodorants and dentifrices’;
– Class 9: ‘Sunglasses, lenses and frames for sunglasses’;
– Class 14: ‘Jewellery; articles of precious metal or coated therewith; bracelets, necklaces, brooches, rings and earrings; watches and clocks; watch straps; watch bracelets and watch chains; parts, fittings and accessories for the aforesaid goods’;
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter and printed publications namely in-store magazines and mail order catalogues for clothing articles’;
– Class 18: ‘Articles made of leather or imitation leather; bags; handbags; rucksacks, shoulder bags, beach bags, athletic bags, tote bags, carry on luggage; clutch bags, travelling bags, wallets, purses, cheque book covers, briefcases, hip pouches, articles of luggage, parasols, umbrellas, canes and belts’;
– Class 25: ‘Articles of clothing, footwear and headgear’;
– Class 26: ‘Wigs, false hair’;
– Class 35: ‘The bringing together for the benefit of others of ranges of clothing, footwear, headgear, fashion accessories and lifestyle items in a retail environment, so that others can conveniently view and purchase such goods’.
8 By decision of 7 March 2007, the examiner maintained her objection under Article 7(1)(b) and (c) of Regulation No 40/94 and refused the new Community trade mark application in its entirety.
9 On 4 May 2007, the applicant filed a notice of appeal against the examiner’s decision at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94.
10 By decision of 3 September 2007 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed that appeal on the grounds that the word sign NEW LOOK was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 and that the evidence filed by the applicant was not sufficient to show that the sign had acquired distinctive character through use for the purposes of Article 7(3) of Regulation No 40/94.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 7(3) of Regulation No 40/94. That plea is divided into three parts, the first part relating to the relevant territory, the second to evidence of earlier use of figurative marks in the United Kingdom and Ireland, and the third to the evidential value of the evidence put forward in relation to those two countries.
14 As regards the first part of the plea, the applicant takes the view that the Board of Appeal infringed Article 7(3) of Regulation No 40/94 in requiring it to demonstrate that the mark applied for had acquired distinctive character in Member States other than the United Kingdom and Ireland. According to the applicant, it is apparent from the case-law that evidence of use must be adduced only in the substantial part of the Community in which the mark was devoid of any distinctive character under Article 7(1)(b) of Regulation No 40/94. It is also apparent from the case-law that, where there is a word sign in English, it may be devoid of distinctive character only in the United Kingdom and Ireland, given that English is the native language only in those two Member States.
15 In that regard, it must be borne in mind that, under Article 7(1)(b) of Regulation No 40/94, read in conjunction with Article 7(2) thereof, a mark must be refused registration if it is devoid of any distinctive character in part of the Community (Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 81). Consequently, in order to be accepted for registration, a sign must possess a distinctive character throughout the Community (Case T-91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II-1925, paragraph 24).
16 Under Article 7(3) of Regulation No 40/94, Article 7(1)(b) thereof does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. It follows that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not, ab initio, have such character for the purposes of Article 7(1)(b) (Storck v OHIM, paragraphs 82 and 83).
17 It must also be borne in mind that the distinctive character of a mark, including that acquired through use, must be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect (judgment of 15 December 2005 in Case T-263/04 BIC v OHIM (shape of a lighter with a flint), not published in the ECR, paragraph 65).
18 In the present case, the Board of Appeal took the view, in paragraphs 14 and 16 of the contested decision, that the relevant public consisted of reasonably well informed and reasonably observant and circumspect members of the general public who are native English speakers and reasonably well informed and reasonably observant and circumspect consumers of the relevant goods in the Community who understand basic English. In paragraph 20, it took the view that the target public thus included, in addition to the general public of the United Kingdom and Ireland, that of Malta, Cyprus, the Scandinavian countries, the Netherlands, Finland and ‘all places where fashion is an important commercial activity’.
19 In that regard, it must be stated, first of all, that the goods and services referred to, which fall within Classes 3, 9, 14, 16, 18, 25, 26 and 35 of the Nice Agreement and include, inter alia, cosmetics, sunglasses, jewellery, articles of clothing, stationery, articles made of leather, including bags and footwear, and wigs, are indeed targeted at the general public.
20 Secondly, it must be pointed out that the word sign applied for is a banal expression which is part of everyday English and does not present any linguistic difficulty. That expression will thus be understood to mean ‘new appearance’ by a public who are native English speakers, but also by people with a basic knowledge of English as such a level of knowledge is sufficient, in the present case, to understand the sign applied for. It is apparent from the case-law that a word sign consisting of English words the combination of which is grammatically correct may have meaning not only for an English-speaking public but also for a public which has sufficient knowledge of the English language (Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 76, and the judgment of 12 March 2008 in Case T-128/07 Suez v OHIM (Delivering the essentials of life), not published in the ECR, paragraph 22).
21 Furthermore, it must be borne in mind that the case-law to which the applicant refers does not, contrary to what the applicant claims, preclude the public of territories other than the United Kingdom and Ireland from being particularly concerned by a sign in English. It was pointed out in the judgment of the Court of First Instance of 12 September 2007 in Case T-164/06 ColArt/Americas v OHIM (BASICS), not published in the ECR, paragraph 24, that the sign BASICS concerned ‘above all’ the public of the United Kingdom and Ireland, which implies that the sign may also be understood in other territories.
22 Consequently, it must be ascertained whether a word sign in a specific language will be understood by the target public in all the territories concerned. Such an understanding may be assumed to exist if a sign is applied for in respect of a territory in which the language of the sign is the native language of the population of the territory and has to be proved in territories in which the relevant language is not the native language of the population, unless a sufficient knowledge of the language of the sign on the part of the target public in those territories is a well-known fact. It is apparent from the case-law that OHIM may of its own motion take into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learned from generally accessible sources (Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraphs 29 to 32).
23 In the present case, at the very least, a basic understanding of English on the part of the general public, in any event, in the Scandinavian countries, the Netherlands and Finland must be regarded as a well-known fact. Therefore, the Board of Appeal was entitled to take the view that the target public in those countries would understand the sign applied for and would not see it as a badge of a particular trade origin for the goods and services at issue, but as an advertisement with the sole aim of making a claim about a product or the change that that product can confer on a person’s appearance. Consequently, the Board of Appeal did not err in finding that the sign applied for is devoid of any inherent distinctive character in those countries.
24 By contrast, given that the words ‘all places where fashion is an important commercial activity’ are so vague that they do not make it possible to define a specific territory and target public, it cannot be regarded as a well-known fact that the general public in the fashion centres of the Community have such a good command of English that it may be assumed that they understand the expression ‘new look’. In addition, as the Board of Appeal’s finding is not based on any evidence, the applicant is justified in claiming that those places were wrongly taken into account. Furthermore, under Article 159a(2) of Regulation No 40/94, Cyprus and Malta cannot be taken into account in the present case as the trade mark application was made before the accession of those Member States to the Community.
25 Inasmuch as the applicant takes the view that such an approach is tantamount to requiring an applicant for a Community trade mark to guess at the level of understanding of English with regard to a specific mark throughout the Community, thus entailing an extremely complex assessment for which there is no reliable data, it must be pointed out that, contrary to what the applicant claims, it is not complex, in the present case, to establish either the level of command of English which is sufficient to understand the sign applied for or the level of command of English in the territories referred to in the contested decision. In that regard, it is sufficient to refer to the findings made in paragraphs 20, 23 and 24 above.
26 Accordingly, the applicant having adduced no evidence of use of the sign applied for in the Scandinavian countries, the Netherlands and Finland, it has not proved that that sign has acquired distinctive character through use throughout the territory, or throughout the whole linguistic area, in which a ground for refusal exists (see, to that effect, paragraphs 15 and 16 above and Case C-108/05 Bovemij Verzekeringen [2006] ECR I-7605, paragraphs 23 and 28). It is apparent from the foregoing that that area covers those territories as well as those of the United Kingdom and Ireland.
27 Therefore the first part of the plea must be rejected.
28 Accordingly, the arguments submitted by the applicant in connection with the two other parts of the plea, relating, first, to the earlier use of figurative marks in the United Kingdom and Ireland and, secondly, to the evidential value of the evidence put forward in relation to those two countries, are irrelevant.
29 Consequently, the action must be dismissed in its entirety.
Costs
30 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, as applied for by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders New Look Ltd to pay the costs.
Martins Ribeiro | Papasavvas | Wahl |
Delivered in open court in Luxembourg on 26 November 2008.
[Signatures]