ORDER OF THE GENERAL COURT (Seventh Chamber)
24 June 2015(*)
(Community trade mark — Application for Community figurative mark Extra — Absolute grounds for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Action manifestly lacking any foundation in law)
In Case T‑553/14,
Wm. Wrigley Jr. Company, established in Wilmington, Delaware (United States), represented by M. Kinkeldey, S. Brandstätter and C. Schmitt, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Walicka, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 19 May 2014 (Case R 218/2014-5) relating to an application for registration of the figurative sign Extra as a Community trade mark,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court of First Instance on 22 July 2014,
having regard to the response lodged at the Court Registry on 10 October 2014,
makes the following
Order
Background to the dispute
1 On 15 April 2013, the applicant, Wm. Wrigley Jr. Company, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in Classes 3, 21 and 30 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 each of those classes, to the following description:
– Class 3: Toothpaste; dentifrices; confectionery for cosmetic purposes, namely chewing gum, bubble gum, candy, mints, drops and lozenges for cleaning or whitening teeth;
– Class 21: Household and kitchen utensils and containers; combs and sponges; brushes (except paint brushes); toothbrushes; brush-making materials; articles for cleaning purposes; glassware; porcelain and earthenware not included in other classes;
– Class 30: Coffee, tea, cocoa and artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar; honey; treacle; yeast, baking-powder; sauces (condiments); spices; ice; confectionery, chewing gum, bubble gum, candy, mints, drops and lozenges.’
4 By decision of 15 November 2013, the examiner rejected the application for registration in respect of all of the goods at issue on the ground that the trade mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
5 On 15 January 2014, the applicant filed an appeal at OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.
6 By decision of 19 May 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal on the basis of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009. It took the view that the mark applied for lacked distinctive character for the English-speaking public.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 Under Article 111 of the General Court’s Rules of Procedure, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, by reasoned order, without taking further steps in the proceedings, give a decision on the action, even if a party has requested that a hearing be held (orders of 13 September 2011 in ara v OHIM — Allrounder (A), T‑397/10, EU:T:2011:464, paragraph 18, and of 21 October 2013 in Lyder Enterprises v OCVV — Liner Plants (1993) (SOUTHERN SPLENDOUR), T‑367/11, EU:T:2013:585, paragraph 17).
10 In this instance, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking further steps in the proceedings.
11 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
12 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation provides that Article 7(1) is to apply notwithstanding that the grounds for refusal exist in only part of the European Union.
13 According to settled case-law, the distinctive character of a trade mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that the mark must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, ECR, EU:C:2012:460, paragraph 23 and the case-law cited).
14 The distinctiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the mark is applied for and, second, in relation to the perception of the relevant public, which is composed of the average consumers of those goods or services (see judgment in Smart Technologies v OHIM, paragraph 13 above, EU:C:2012:460, paragraph 24 and the case-law cited).
15 Any distinctive character of a compound mark may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character (judgment of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 29).
16 However, where it does not appear that there is concrete evidence, such as, for example, the way in which the various elements are combined, to indicate that a compound trade mark, taken as a whole, is greater than the sum of its parts, such a trade mark is devoid of distinctive character in respect of the goods and services concerned (see, to that effect, judgment in BioID v OHIM, paragraph 15 above, EU:C:2005:547, paragraphs 34 and 37).
17 Lastly, a trade mark is devoid of distinctive character if its semantic content indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or service at issue (judgment of 17 January 2013 in Solar-Fabrik v OHIM (Premium XL and Premium L), T‑582/11 and T‑583/11, EU:T:2013:24, paragraph 15).
18 In the present case, the sign applied for is made up of a word element, namely the word ‘extra’, and a figurative element, consisting in a sphere or full circle divided into two halves. The word ‘extra’ is written in white characters, the edges of which are in different tones. Those different tones give the word ‘extra’ a slightly three-dimensional aspect. The left half of the sphere is represented in dark tones, whilst the right half is shown in lighter tones. The various tones on the right half give an impression of a three-dimensional image. The contour of the sphere is made up of different tones.
19 It is common ground that since the goods at issue are inexpensive everyday consumer products, the public’s level of attention at the time of purchase of those goods must be considered average. Moreover, since the word ‘extra’ exists in English, the Board of Appeal could take the English-speaking public into consideration in assessing the distinctive character of the sign applied for.
20 What is more, it should be noted that the word ‘extra’ is an adjective meaning ‘beyond or more than the usual, stipulated or specified amount or number; additional’ and that it denotes a promotional or laudatory meaning for all the goods covered by the mark applied for. The typeface used for the word ‘extra’ is banal and the various tones used give the word only a slightly three-dimensional aspect. The stylisation of the word is thus simple. The figurative element of the sign applied for, consisting in a sphere or full circle divided into two halves in different tones, is a banal shape which will be perceived as a simple decorative element in the background. Thus, neither the figurative element of the sign applied for nor the stylisation of the word ‘extra’ will divert consumers’ attention away from the clear message conveyed by the word. The mark applied for, as a whole, will therefore be perceived as a simple promotional message and not as an indication of the commercial origin of the goods at issue.
21 Therefore, in the light of the foregoing, the Board of Appeal was correct in concluding that the mark applied for, as a whole, lacked a sufficient degree of distinctive character for the English-speaking public (paragraph 18 of the contested decision).
22 Clearly, the applicant’s arguments put forward to counter that conclusion cannot be upheld.
23 Regarding, first of all, the argument to the effect that since the word element and the figurative element of the sign applied for form an inseparable entity, that sign will be perceived as a distinctive unitary logo, it should be noted that the word element, which is mainly white and placed front in the sign applied for, stands out clearly from the figurative element, which is darker tones and placed in the background. Those elements do not, therefore, form an inseparable entity and the sign applied for will not be perceived as a distinctive unitary logo.
24 Secondly, regarding the argument to the effect that the Board of Appeal, in finding that the sign applied for was made up of the combination of the word ‘extra’, written in a simple typeface, and a full circle in different tones, disregarded the original, fanciful features of the sign, it must be borne in mind, as pointed out by the applicant itself, that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 7 October 2004 in Mag Instrument v OHIM, C‑136/02 P, ECR, EU:C:2004:592, paragraph 20).
25 Thirdly, regarding the argument that given the particularities of the figurative element, it does not refer — not even in a stylised manner — to the shape or colour of a drop or lozenge and that the Board of Appeal did not give a single example of candy with the shape and colours of the figurative element of the sign applied for, suffice it to note that, given that it is well known that those goods may be in the shape of a full circle and may exist in different tones, the Board of Appeal was not required to provide examples.
26 Fourthly, nor can the argument that the Board of Appeal examined only the various elements of the mark applied for and failed to take into consideration the overall impression produced by that mark be upheld. It should be noted that, after examining separately the distinctive character of each of the elements making up the mark applied for, the Board of Appeal assessed the distinctive character of the combination of those elements, emphasising that they did not merge to create an inseparable entity, that the figurative element was merely an element in the background and incapable of conferring on the word element a sufficient degree of distinctive character and that the stylisation of the word ‘extra’ was not sufficient to make the mark applied for distinctive (paragraphs 16 and 17 of the contested decision). It therefore assessed the mark as a whole.
27 Lastly, the applicant cannot successfully argue that the contested decision should be annulled due to the existence of earlier decisions of OHIM which allowed registration of signs comprising the word element ‘extra’. It must be borne in mind that, according to settled case-law, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (see judgment of 29 September 2009 in The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, ECR, EU:T:2009:364, paragraph 36 and the case-law cited). Moreover, although, in the light of the principles of equal treatment and sound administration OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications, those principles must however be consistent with respect for legality and that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (order of 11 September 2014 in Think Schuhwerk v OHIM, C‑521/13 P, ECR, EU:C:2014:2222, paragraph 57).
28 In the present case, since the Board of Appeal was correct in concluding that the mark applied for lacked distinctive character (see paragraph 21 above), the applicant could not successfully rely on earlier decisions of OHIM in order to refute that conclusion.
29 It follows from all of the foregoing that the single plea in law must be rejected as being manifestly unfounded and, therefore, that the action must be rejected as manifestly lacking any foundation in law.
Costs
30 Under Article 87(2) of the Rules of Procedure, 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, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1. The action is dismissed.
2. Wm. Wrigley Jr. Company shall pay the costs.
Luxembourg, 24 June 2015.
E. Coulon | | M. van der Woude |