JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
19 November 2009 (*)
(Community trade mark – Application for Community word mark 1000 – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation No 40/94 (now Article 7(1)(c) of Regulation (EC) No 207/2009))
In Case T‑298/06,
Agencja Wydawnicza Technopol sp. z o.o., established in Częstochowa (Poland), represented by V. von Bomhard, A Renck and T. Dolde, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 August 2006 (Case R 447/2006-4), relating to the application for registration of the word mark 1000 as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of I. Pelikánová, President, K. Jürimäe and S. Soldevila Fragoso (Rapporteur), Judges,
Registrar: K. Pocheć, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 18 October 2006,
having regard to the response lodged at the Court Registry on 17 January 2007,
further to the hearing on 26 November 2008,
gives the following
Judgment
Background to the dispute
1 On 4 April 2005, the applicant, Agencja Wydawnicza Technopol sp. z o.o., filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word sign 1000.
3 The goods and services in respect of which registration was sought are in Classes 16, 28 and 41 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 for each of those classes:
– Class 16: ‘posters, placards, brochures, periodicals, including periodicals containing crossword puzzles and rebus puzzles, printed matter, newspapers’;
– Class 28: ‘brain teasers, riddles, puzzles’;
– Class 41: ‘organising contests, publishing texts’.
4 By letter of 27 September 2005, the examiner informed the applicant that the sign 1000 was not eligible for registration for any of the goods covered by the application, pursuant to Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009). In its reply of 14 November 2005, the applicant restricted the list of the goods covered by the application to those in Class 16 and excluded posters, placards and printed matter.
5 On 31 January 2006 the examiner refused the application for registration for the goods in Class 16, pursuant to Article 7(1)(b) and (c) of Regulation No 40/94, on the grounds that the sign 1000 was an indication describing the contents or other characteristics of the goods covered by the trade mark application, that the sign in question did not have any distinctive character, but was an advertising statement, and that it had not become distinctive through use within the meaning of Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009).
6 On 31 March 2006, the applicant filed an appeal against the examiner’s decision. By decision of 7 August 2006 (‘the contested decision’) the Fourth Board of Appeal dismissed the appeal, confirming the examiner’s analysis.
7 In essence, the Board of Appeal held, first, that the figure 1000 could be used to designate the contents of brochures, magazines and periodicals (paragraphs 16 to 21 of the contested decision), that Article 12 of Regulation No 40/94 (now Article 12 of Regulation No 207/2009) did not enable the conditions for registration of Community trade marks to be relaxed (paragraph 22 of the contested decision), and that the registrations of Community trade marks cited by the applicant were not comparable with the facts of the present case (paragraph 23 of the contested decision). Next, the Board of Appeal held that the mark applied for was not distinctive since it would be perceived by the public as praising the publication’s success in the market and not as an indication of the origin of a given company (paragraphs 25 to 28 of the contested decision). Lastly, the Board of Appeal held that the applicant had failed to prove that the mark applied for had become distinctive through use in a substantial part of the European Community (paragraphs 29 to 31 of the contested decision).
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
9 OHIM contends that the Court should:
– dismiss the action as unfounded;
– order the applicant to pay the costs.
10 At the hearing, the applicant confirmed that the subject-matter of the dispute was restricted to the list of the goods in Class 16 as amended by its reply of 14 November 2005 (see paragraph 4 above), formal note of which was taken in the minutes of the hearing.
Law
11 The applicant makes a preliminary observation on the registrability of numerals and raises two pleas in law in support of its action, the first alleging infringement of Article 7(1)(c) of Regulation No 40/94 and the second infringement of Article 7(1)(b) of that regulation.
Preliminary observation
Arguments of the parties
12 The applicant submits that Article 4 of Regulation No 40/94 (now Article 4 of Regulation No 207/2009) contains a general principle according to which numerals may be registered as trade marks, and that there is no reason why numerals cannot help to distinguish in the market the goods or services of different competitors.
13 OHIM maintains that although that principle is correct, it only relates to the capability of numerals in theory to distinguish the goods and services in the market. That theoretical capability is a necessary, but not a sufficient, condition for registration, since the signs must also meet the requirements laid down in Article 7 of Regulation No 40/94.
Findings of the Court
14 It is clear from the wording of Article 4 of Regulation No 40/94 that numerals may be registered as Community trade marks.
15 However, in order to be registered, any sign must meet the requirements laid down in Article 7 of Regulation No 40/94, which prevents registration of signs not capable of fulfilling the function of identifying to the consumer the commercial origin of the goods and services covered by the application for registration (judgment of 9 July 2008 in Case T-302/06 Hartmann v OHIM (E), not published in the ECR, paragraphs 29 and 30). Therefore, a numeral may be registered as a Community trade mark only if it is distinctive in relation to the goods and services covered by the application for registration and is not merely descriptive of those goods and services.
First plea in law, alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
16 The applicant submits that the fact that a sign may allude to certain characteristics of the goods covered by the Community trade mark application or, in the case of publications, give the consumer general information about their subject-matter, is not sufficient to justify application of Article 7(1)(c) of Regulation No 40/94. Otherwise, the registrations of Community trade marks such as Mi Casa, Country Garden or House & Garden, for periodicals or brochures, should be declared invalid.
17 The applicant also submits that OHIM erred in finding that, in the absence of any additional qualifying word, the sign 1000 described the amount of information contained in the brochures, periodicals, including periodicals with crossword puzzles and rebus puzzles, and newspapers. The applicant argues that the sign 1000 does not describe the contents of those goods, because it would be impossible to determine the specific characteristics of the goods that would be deduced from that number. In support of those arguments, the applicant relies on a judgment of the Oberlandesgericht München (Munich Higher Regional Court, Germany), in which it was held that the sign Mozart had distinctive character for pastries, chocolate goods and confectionery, since it was associated exclusively with the name of the composer. Thus, from the point of view of the relevant consumer no direct and specific link can be ascertained in the present case between the characteristics of the goods and the signs.
18 The applicant also submits that the registration of the sign 1000 does not hinder third parties from using that number in order to indicate quantities where such use does not constitute a trade mark infringement. In addition, it submits that there is no need to keep the figure 1000 free for third parties, since in the case of four‑digit numbers there are 10 000 possible combinations. In point of fact, the registration of two‑letter or two-digit combinations has been allowed by OHIM since the decisions of the Second Board of Appeal of 11 March and 8 June 1998 (Cases R 4/1998-2 and R 25/1998-2) in respect of the signs IX and XD, even though in an alphabet of 26 letters there are only 676 possible combinations for two-letter marks, and 100 possible combinations for two-digit marks.
19 OHIM contests all of the arguments put forward by the applicant.
Findings of the Court
20 Article 7(1)(c) of Regulation No 40/94 prohibits registration of 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. Those descriptive signs are deemed incapable of fulfilling the essential function of trade marks of indicating origin (Case C-191/01 P OHIM v Wrigley [2003] ECR I‑2447, paragraph 30, and Case T‑181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 35).
21 From that point of view, the signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (Case T‑19/04 Metso Paper Automation v OHIM(PAPERLAB) [2005] ECR II‑2383, paragraph 24; Case T-207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 26; and judgment of 21 May 2008 in Case T-329/06 Enercon v OHIM (E), not published in the ECR, paragraph 21).
22 According to settled case-law, the sign is descriptive if there is a sufficiently direct and specific link between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or of one of their essential characteristics (EUROPIG, paragraph 27, and STEADYCONTROL, paragraph 36).
23 Accordingly, a sign’s descriptiveness can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (STEADYCONTROL, paragraph 38, and E, paragraph 23).
24 In the present case, the goods concerned are brochures, periodicals, including periodicals with crossword puzzles and rebus puzzles, and newspapers, and are intended for the general public. This is not disputed by the parties. As the Board of Appeal stated in paragraph 17 of the contested decision, and is not disputed by the applicant, the figure 1000 occurs in all Community languages and is thus understood by all consumers within the Community. The relevant public therefore consists of the average consumers of the goods in question throughout the Community.
25 It is therefore necessary to determine whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, will, without any additional information, perceive in the figure 1000 a description of one of the characteristics of the goods covered by the application for registration.
26 In that connection, it should be noted that, as is apparent from paragraphs 18 and 19 of the contested decision, there is from the point of view of the relevant public a direct and specific link between the sign 1000 and some of the characteristics of the goods concerned. The sign 1000 alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them. That conclusion cannot be invalidated by the fact that the mark applied for is composed only of figures, since, as OHIM has noted, the missing information may be readily identified by the relevant public, the association between the figure and those characteristics of the goods in question being immediate.
27 In particular, as the Board of Appeal stated in paragraphs 18 and 19 of the contested decision, brochures, periodicals and magazines frequently publish ranking lists and collections, with the preference then being for round numbers in order to indicate content, the Board of Appeal referring in particular in that regard to the example of the publication ‘1000 Fragen und Antworten’ (‘1000 Questions and Answers’). This strengthens the descriptive relationship that exists from the point of view of the average consumer between the goods in question and the figure 1000.
28 Contrary to what the applicant argues, the fact that the figure 1000 may refer to any of the characteristics of the goods in question does not preclude the finding that it describes the goods covered by the application for registration. By its argument, the applicant implicitly accepts that those characteristics include the number of pages and works, amount of data, and the number of puzzles in a collection, or the ranking of the items referred to in the goods covered by the application for registration (Case T-302/03 PTV v OHIM (map&guide) [2006] ECR II‑4039, paragraph 49).
29 In addition, the fact that different links may be established between the figure 1000 and certain characteristics of the goods concerned does not change the descriptive impression of the sign. According to settled case‑law, it is sufficient if at least one of the possible meanings of the sign in question designates a characteristic of the goods or services concerned, as is the case here (Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 38, and Case T‑316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II‑1951, paragraph 33).
30 Since it has been established that the figure 1000 is descriptive of the goods covered by the application for registration, it is necessary to examine whether the mark applied for consists exclusively of descriptive signs and whether it contains other elements which may negate the finding that it is descriptive. That may be the case of a particular get-up or layout which distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 39, and EUROPIG, paragraph 41). In the present case, the word sign 1000 does not contain any element distinguishing it from the usual way of indicating a quantity that would be capable of negating its descriptive character.
31 It follows from all of the foregoing that the word sign 1000 designates characteristics of the goods concerned, in particular the number of pages and works, amount of data, and the number of puzzles in a collection, or their ranking, which the target public is liable to take into account when choosing and which are therefore essential characteristics of the goods. Consequently, the Board of Appeal was correct to conclude that the sign is descriptive.
32 That conclusion cannot be invalidated by the applicant’s remaining arguments referred to in paragraphs 17 and 18 above. First, it is necessary to reject as ineffective the argument that the registration of the sign 1000 would not deprive third parties of the right to use that figure to designate quantities where such use does not constitute a trade mark infringement. By that argument the applicant relies on Article 12(b) of Regulation No 40/94 (now Article 12(b) of Regulation No 207/2009), concerning the limitation of exclusive rights resulting from the registration of a trade mark. In accordance with the case‑law of the Court of First Instance, Article 12 of Regulation No 40/94 cannot be relied on during the registration procedure (Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II‑2831, paragraph 46). The application of that article presupposes the existence of a sign which has been registered as a trade mark either because it has become distinctive through use, in accordance with Article 7(3) of Regulation No 40/94, or because of the presence of both descriptive and non-descriptive elements, which is not the case here (see, to that effect, Case T-20/02 Interquell v OHIM – SCA Nutrition (HAPPY DOG) [2004] ECR II‑1001, paragraph 56). Therefore, Article 12 of Regulation No 40/94 may not be regarded as relaxing the criteria for examining the absolute grounds for refusing registration.
33 Second, as regards the applicant’s argument that there is no need to keep the figure 1000 free for third parties, since in the case of four‑digit numbers there are 10 000 possible combinations, it must be pointed out, as is apparent from paragraphs 18 to 20 of the contested decision, that the mark in question was refused registration owing to the descriptive character of the sign. That descriptive character prevents the sign 1000 from fulfilling the function of indicating the commercial origin of the goods covered by the application for registration. Therefore, the existence of other possible combinations of figures is irrelevant for the purposes of registration. In addition, the fact that OHIM has registered as trade marks the signs IX and XD, leaving fewer possible combinations of figures and letters available to competitors, is of no relevance. The legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 40/94 and not on the basis of OHIM’s previous practice in taking decisions (Case T‑127/02 Concept v OHIM (ECA) [2004] ECR II‑1113, paragraph 71, and Joined Cases T‑211/06, T-213/06, T-245/06, T‑155/07 and T‑178/07 Euro‑Information v OHIM (CYBERCREDIT, CYBERGESTION, CYBERGUICHET, CYBERBOURSE and CYBERHOME), not published in the ECR, paragraph 44).
34 Third, the applicant’s arguments based on the decision of the Oberlandesgericht München must be rejected. Admittedly, it is apparent from the case-law that neither the parties nor the Court of First Instance itself are precluded from drawing on Community, national or international case-law for the purposes of interpreting Community law (Case T-277/04 Vitakraft‑Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) [2006] ECR II‑2211, paragraph 71, and Case T-332/04 Sebirán v OHIM – El Coto De Rioja (Coto D’Arcis), not published in the ECR, paragraph 56). However, the legal and factual background of the case heard by the German court differs substantially from that of the present case, since the signs at issue are different and are not even comparable in terms of their structure or meaning. Consequently, the decision relied on by the applicant may not be taken into account for the purposes of assessing the legality of the contested decision.
35 Fourth, contrary to the applicant’s argument referred to in paragraph 16 above, the finding that the sign 1000 is descriptive cannot result in hundreds of Community trade marks being declared invalid. It is only in as far as the link between a sign and the goods and services concerned is specific and direct (see paragraph 22 above) that Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009) and Article 7(1)(c) of that regulation may give rise to such declarations of invalidity (map&guide, paragraph 50).
36 In the light of the foregoing, the first plea in law must be rejected.
37 As regards the second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94, it should be recalled that, as is clear from Article 7(1) of Regulation No 40/94, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal referred to in Article 7(1) applies (Joined Cases T-178/03 and T-179/03 CeWe Color v OHIM (DigiFilm and DigiFilmMaker) [2005] ECR II‑3105, paragraph 42, and E, paragraph 41).
38 Since the Court has rejected as unfounded the plea in law alleging infringement of Article 7(1)(c) of Regulation No 40/94, the present action must be dismissed in its entirety and there is no need to adjudicate on the plea in law alleging infringement of Article 7(1)(b) of Regulation No 40/94.
Costs
39 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 in accordance with the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Agencja Wydawnicza Technopol sp. z o.o. to pay the costs.
Pelikánová | Jürimäe | Soldevila Fragoso |
Delivered in open court in Luxembourg on 19 November 2009.
[Signatures]