JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
15 September 2016 (*)
(EU trade mark — Invalidity proceedings — EU figurative trade mark VOGUE — Absolute ground for refusal — No descriptive character — Distinctiveness — Article 52(1)(a), read in conjunction with Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Bad faith — Article 52(1)(b) of Regulation No 207/2009)
In Case T‑453/15,
Trinity Haircare AG, established in Herisau (Switzerland), represented by J. Kroher and K. Bach, lawyers,
European Union Intellectual Property Office (EUIPO), represented by J. Lewis and J. Crespo Carrillo, acting as Agents,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Advance Magazine Publishers, Inc., established in New York, New York (United States), represented by D. Ivison, Barrister,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 May 2015 (Case R 2426/2014-4) relating to invalidity proceedings between Advance Magazine Publishers and Trinity Haircare,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 August 2015,
having regard to the response of EUIPO lodged at the Court Registry on 8 October 2015,
having regard to the response of the intervener lodged at the Court Registry on 12 October 2015,
having regard to the fact that no request for a hearing was submitted by the parties within the period of three weeks from notification of closure of the written part of the procedure, and having decided to rule on the action without an oral procedure pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Background to the dispute
1 On 4 September 2004, the intervener, Advance Magazine Publishers, Inc., lodged 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).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought fall within Class 3 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, for that class, to the following description: ‘Cleaning, scouring and polishing preparations and substances; non-medicated toilet preparations and substances; beauty preparations and substances; cosmetics; make up; lip-stick and lip gloss; dentifrices; fragrances, perfumery, cologne, toilet waters and eau de colognes; essential oils; aromatherapy products; deodorants for personal use; anti-perspirants; sun-tan and sun-screening preparations and substances; depilatory preparations and substances; shaving cream and shaving soaps; massage oils; powders, creams and lotions; nail polish; nail polish remover; soaps and shampoos; shaving and after-shave preparations; preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, teeth and nails; shower and bath preparations; bath oils and bath salts; talcum powder; moisturisers; non-medicated baby oils and baby creams; non-medicated baby wipes; cotton wool.’
4 On 11 April 2011, the EU trade mark described in paragraph 2 above was registered under number 9 944 547.
5 On 6 July 2012, the applicant, Trinity Haircare AG, filed an application for a declaration of invalidity against the EU trade mark mentioned in paragraph 2 above in respect of all the goods referred to in paragraph 3 above. The application for a declaration of invalidity was based on Article 52(1)(a), read in conjunction with Article 7(1)(b) and (c) of Regulation No 207/2009, and on Article 52(1)(b) of that regulation.
6 By decision of 22 July 2014, the Cancellation Division rejected the application for a declaration of invalidity.
7 On 9 March 2012 the applicant brought an appeal before EUIPO against the decision of the Cancellation Division.
8 By decision of 27 May 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
9 The Board of Appeal considered that the sign at issue was neither descriptive nor laudatory and that it was sufficiently distinctive. It also found that no act of bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009 had been proved.
Procedure and forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision and declare the contested mark invalid;
– order EUIPO and the intervener to pay the costs of the proceedings.
11 EUIPO, supported by the intervener, contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 In support of its action, the applicant puts forward three pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation No 207/2009, the second alleging infringement of Article 7(1)(b) of that regulation and the third alleging infringement of Article 52(1)(b) of that regulation.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
13 The applicant submits, in essence, that the Board of Appeal erred in holding that the contested mark was not descriptive. In particular, it takes the view that the Board of Appeal wrongly held, in paragraph 16 of the contested decision, that the applicant had not established that the term ‘vogue’ was used as a synonym for ‘fashion’ or as a shortened form of the expression ‘en vogue’. In addition, it alleges that the Board of Appeal failed to take into consideration certain evidence it had provided in order to prove that the contested mark was descriptive. In this connection, it relies upon results of internet searches using the words ‘vogue’ and ‘cosmetics’ and decisions of German and Swiss national authorities which refused trade marks similar to the contested mark on the ground that those marks were descriptive.
14 EUIPO, supported by the intervener, disputes the applicant’s arguments.
15 It should be recalled that Article 52(1) of Regulation No 207/2009 provides as follows:
‘A[n EU] trade mark shall be declared invalid on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings,
(a) where the [EU] trade mark has been registered contrary to the provisions of Article 7 ...’
16 Article 7(1)(c) of Regulation No 207/2009 provides that 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 not to be registered. In addition, Article 7(2) of Regulation No 207/2009 states that its first paragraph is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
17 The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (judgments of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 24).
18 It follows that, for a sign to be caught by the prohibition set out in that provision, 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 (judgment of 22 June 2005, PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 25).
19 Accordingly, whether a sign is descriptive may be assessed only, first, in relation to the goods or services concerned and, second, in relation to the understanding which the relevant public has of it (see judgment of 16 March 2006, Telefon & Buch v OHIM — Herold Business Data (WEISSE SEITEN), T‑322/03, EU:T:2006:87, paragraph 90 and the case-law cited).
20 In the present case, it should first of all be held that, having regard to their description, the goods at issue fall within the field of beauty and baby care and are, for the most part, intended for end consumers in general, which is not disputed by the parties. The Board of Appeal therefore rightly found the relevant public to be the average consumer who is reasonably well informed and reasonably observant and circumspect. It is important to observe that the Board of Appeal found that the average consumer speaks English or French; nor is that point disputed by the parties.
21 For the purposes of the application of Article 7(1)(c) of Regulation No 207/2009, the target public by reference to whom the absolute ground for refusal must be assessed is therefore the average English-speaking consumer and the average French-speaking consumer who are reasonably well informed and reasonably observant and circumspect.
22 Next, for the purposes of the application of that provision, it must be examined, on the basis of a given meaning of the figurative sign at issue, whether, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the word ‘vogue’ and the goods in respect of which registration was effected (see, to that effect, judgment of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 42 and the case-law cited).
23 In the contested decision (paragraph 15), the Board of Appeal confirmed that, as in French, ‘vogue’ in English had the meaning ‘popularity, use or general acceptance; popularity with the audience’ according to well-known dictionaries. It also asserted that there were expressions such as ‘en vogue’ (in French) or ‘in vogue’ (in English), which mean ‘fashionable, tendency’. However, the Board of Appeal stated that the applicant had not demonstrated that the word ‘vogue’ was used as a synonym for those expressions (contested decision, paragraph 16). Likewise, it held that nothing indicated that the word ‘vogue’ was descriptive of the goods at issue.
24 Those conclusions should be upheld. There is nothing in the definition of the word ‘vogue’ which indicates that that word has a sufficiently direct concrete link to the goods in question to enable the public concerned immediately, and without further thought, to perceive a description of an essential characteristic of the goods in question or of one of their characteristics (judgment of 22 June 2005, PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 25). In respect of beauty products and baby care products, it is hard to see how the word ‘vogue’ is descriptive of those products whose characteristic function is care or beauty care, which does not fall within the area of fashion. In that regard, EUIPO, supported by the intervener, is entitled to state that beauty and care products are not fashion products, given that consumers buy them for their ‘result’, that is to say, the fact that the product moisturises well, deodorises well or produces a pleasant scent. In that connection, EUIPO rightly notes that the notion of fashion is connected with the permanent change linked to every season and every year. That is not the case with the goods at issue, in respect of which change is rarely linked to the change of season or year but rather to innovation, that is to say, the appearance of a new product in a position to satisfy the consumers’ unmet needs. Therefore, fashion is not concerned with care and beauty products.
25 So far as concerns the list of the results of internet searches submitted as proof by the applicant during the administrative procedure, it must be held, in the same way as the Board of Appeal held, that that list does not prove that the word ‘vogue’ is descriptive of the goods at issue. The results of the searches submitted demonstrate, rather, that there is a reference to the commercial origin of certain services, such as those provided in a beauty salon, or to the intervener’s magazine. The fact that the applicant’s search displays around 850 million results does not prove by itself that ‘vogue’ is descriptive of the goods at issue. Besides, the applicant does not propose any analysis in support of this.
26 Likewise, as regards the decisions by which the competent German and Swiss authorities refused to register trade marks similar to the contested mark on the grounds that those marks were descriptive, that argument should be dismissed as ineffective, inasmuch as the EU trade mark system is an independent system, made up of a body of rules and pursuing objectives that are specific to it, its application being independent of any national system. Consequently, the contested mark must be assessed only on the basis of the relevant EU rules and the national decisions can in no circumstances call into question the legality of the contested decision (judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 65 and 66).
27 In the light of the foregoing, the first plea must be rejected as unfounded.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
28 Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.
29 According to the case-law, for a trade mark to possess distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the product for which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34 and the case-law cited).
30 Accordingly, the signs referred to in that article are incapable of performing the essential function of a trade mark, namely, that of identifying the origin of the goods, thus enabling the consumer who acquired them to make the same choice, when making a subsequent acquisition, if the experience has proved positive, or to make another choice, if it has proved negative (judgments of 27 February 2002, Rewe-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26, and of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für ihr Geld), T‑281/02, EU:T:2004:198, paragraph 24).
31 Distinctiveness must be assessed, first, in relation to the goods or services for which registration has been requested and, second, in relation to the perception of the public concerned, which is composed of consumers of those goods or services (judgment of 27 February 2002, LITE, T‑79/00, EU:T:2002:42, paragraph 27).
32 The Board of Appeal held in the contested decision (paragraph 18) that the contested mark was distinctive, given that the applicant had not demonstrated that the term ‘vogue’ was commonly used in advertising as a laudatory term and that nothing else indicated that this would be the case.
33 The applicant considers that the contested mark is descriptive and laudatory and that it is thus devoid of any distinctive character.
34 EUIPO, supported by the intervener, disputes the applicant’s arguments.
35 It should be recalled, first of all, that, within the context of the analysis of the first plea, it was concluded that the Board of Appeal had not committed an error in holding that the sign at issue was not descriptive. The applicant therefore erred in attempting to demonstrate that that sign was devoid of any distinctive character on the basis of its allegedly descriptive nature.
36 Likewise, nothing in the file permits the inference that the contested mark is laudatory and on that basis devoid of any distinctive character so far as the goods at issue are concerned. As was noted above, the word ‘vogue’ is not used as a synonym of the word ‘fashion’ or the expression ‘en vogue’.
37 Consequently, the second plea must be rejected as unfounded.
The third plea, alleging infringement of Article 52(1)(b) of Regulation No 207/2009
38 Under Article 52(1)(b) of Regulation No 207/2009 ‘[an EU] trade mark shall be declared invalid on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings … where the applicant was acting in bad faith when he filed the application for the trade mark’.
39 According to the case-law, in order to determine whether the applicant for registration is acting in bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009, account must be taken of all the relevant factors specific to the particular case which obtained at the time of filing the application for registration of a sign as an EU trade mark, in particular: the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service that could be confused with the sign for which registration is sought; the applicant’s intention of preventing that third party from continuing to use such a sign; and the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 53).
40 The Board of Appeal observed, at the outset, the lack of any evidence indicating that the intervener had sought registration of an EU trade mark for goods in Class 3 that could be considered to be identical to the contested mark. It then considered, in essence, that the possibility of submitting an application for an EU trade mark in order to obtain unitary protection of the trade mark at Union level, over and above the protection granted by the national marks registered in the various Member States, was the very object of the EU trade mark system and cannot therefore be considered to be an act of bad faith.
41 The applicant essentially claims that the contested mark was submitted in bad faith, given that the intervener had repeatedly submitted, between 1962 and 2003, that is to say, before the contested mark was filed, the mark VOGUE in numerous Member States for goods included in Class 3, without having the intention of using them but with the sole aim of avoiding consequences of non-use.
42 EUIPO, supported by the intervener, disputes the applicant’s arguments.
43 It should be noted that the documents attached to the applicant’s written pleading of 6 July 2012 bearing the references AS 5 and AS 6 concern international registrations No 699 080 for the word mark VOGUE, registered on 21 August 1998 and protected in non-Member States of the European Union and in Benelux, Bulgaria, France, Croatia, Italy, Latvia, Hungary, Poland, Romania, Slovenia and Slovakia, and other VOGUE word marks lodged as national marks between 1962 and 2003 in Bulgaria, Denmark, Germany, Ireland, Spain, France, Italy, Austria, Poland, Portugal, Sweden and the United Kingdom. The evidence also relates to German figurative mark No 398 43 454, French figurative mark No 1 330 837 and Spanish figurative mark No M0447 490, three figurative marks in a style different from that of the contested figurative mark.
44 There is no evidence of any repeated lodging by the intervener of applications for EU trade marks for the contested mark in Class 3. Consequently, the Board of Appeal rightly concluded that, in the present case, the evidence did not demonstrate that the lodging of the contested mark constituted a repeated lodging of previous registrations at EU level (see, to that effect, judgment of 13 December 2012, pelicantravel.com v OHIM — Pelikan (Pelikan), T‑136/11, EU:T:2012:689, paragraphs 27 and 28).
45 In addition, the Board of Appeal was fully entitled to find that the EU trade mark system was an independent and self-sufficient system, and its application independent of any national system. The possibility of submitting an application for an EU trade mark in order to obtain unitary protection at Union level, over and above the protection granted by national marks registered in the various Member States, is the very object of the EU trade mark system and is not, therefore, to be considered in itself to be an act of bad faith. Moreover, the lodging of an EU trade mark application identical or very similar to national or international marks already lodged is consonant with commercial logic and does not by itself constitute evidence of bad faith (see, to that effect, judgment of 14 February 2012, Peeters Landbouwmachines v OHIM — Fors MW (BIGAB), T‑33/11, EU:T:2012:77, paragraph 23). In that regard, it should be observed, in addition, that it is apparent from the file that the intervener used the contested mark within the context of a commercial strategy in order to diversify and develop that trade mark in various categories of goods. In that context, it marketed to the general public goods falling within Class 3 and used cosmetic products as samples promoted on the cover of magazines and as subscription incentives in order to stimulate the sale of those magazines in various Member States of the Union.
46 It is also necessary to dismiss the arguments drawn from the EUIPO decision of 13 February 2014 in Case R 1260/2013-2 (‘Canal +’). Contrary to what the applicant submits, the question consisting of determining the extent to which an earlier trade mark might be relied upon in opposition proceedings is different from the assessment of bad faith under Article 52(1)(b) of Regulation No 207/2009, for the legal consequences to be drawn therefrom are different. In that regard, it should be recalled that, in the Canal + case, the opposition had been rejected on the grounds that the previous EU trade mark seemed to be a repeated lodging of national trade marks and that proof of usage ought to have been submitted even if the earlier trade mark was not subject to an obligation of use. Such a solution is less severe than that requested in the present case by the applicant, namely, that of declaring the earlier mark invalid on the grounds that it was lodged in bad faith.
47 Likewise, in order to prove non-use of the VOGUE trade mark for goods included in Class 3, the applicant relies upon the fact that during proceedings before the Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office) the proprietor of the VOGUE trade mark withdrew its opposition to an application submitted by the applicant for the VOGUE DE TRINITY trade mark. According to the applicant, that withdrawal (as outlined in the attachment to the document of 6 July 2012 under reference AS 8) constitutes evidence that the intervener did not use its earlier right for goods included in Class 3.
48 However, the withdrawal of the opposition before the Spanish Patent and Trademark Office does not constitute evidence of non-use of the contested mark, which would at all events be insufficient in itself to adduce evidence of the intervener’s bad faith. In that regard, it should be recalled that it is apparent from the case-law that EUIPO does not have the right to carry out once again an examination of its own motion of all the absolute grounds for refusal, but only an examination of those submitted by the applicant. The EU trade mark enjoys a presumption of validity and it is for the person who submitted the application for a declaration of invalidity to invoke, before EUIPO, specific information calling into question the validity of the contested mark (see, to that effect, judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM — Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraphs 27 to 29).
49 In view of the foregoing considerations, the third plea must be rejected and, accordingly, the action must be dismissed in its entirety.
50 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.
51 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber),
1. Dismisses the action;
2. Orders Trinity Haircare AG to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Advance Magazine Publishers, Inc.
Delivered in open court in Luxembourg on 15 September 2016.