JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
11 July 2012 (*)
(Community trade mark – Application for the Community figurative mark natural beauty – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009)
In Case T‑559/10,
Laboratoire Garnier et Cie, established in Paris (France), represented initially by R. Dissmann and A. Steegmann, and subsequently by R. Dissmann, lawyers,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
ACTION brought against the decision of the First Board of Appeal of OHIM of 23 September 2010 (Case R 971/2010‑1) concerning the registration of the figurative sign natural beauty as a Community trade mark,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro and A. Popescu (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Registry of the General Court on 7 December 2010,
having regard to the response lodged at the Court Registry on 21 January 2011,
further to the hearing on 16 April 2012,
gives the following
Background to the dispute
1 On 17 April 2009, the applicant, Laboratoire Garnier et Cie, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The trade 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 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 to the following description: ‘Cosmetics; body and beauty care products’.
4 By decision of 30 March 2010, the examiner rejected the application for registration on the basis of the combined provisions of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, on the ground that that mark, considered as a whole, was descriptive and devoid of distinctive character. He noted that the goods were cosmetic products intended for the average consumer and that, as the mark applied for was composed of English words, the relevant public was English-speaking. He took the view that the mark applied for was descriptive in so far as, inter alia, it immediately informed the consumer that the goods in question were cosmetics that have a positive effect, namely the capacity to preserve one’s natural beauty. The examiner also took the view that the mark applied for was devoid of distinctive character. Given the clearly descriptive meaning of the mark applied for, the impact of that mark on the relevant public would be primarily descriptive, thereby eclipsing any impression that the mark applied for could indicate the commercial origin of the goods. Furthermore, as the stylisation of the mark applied was negligible, it did not endow that mark, as a whole, with any distinctive character. Finally, the examiner took the view that the fact that the sign applied for, or other descriptive marks, are actually used for cosmetics was irrelevant and did not confer distinctive character on the sign applied for.
5 On 28 May 2010 the applicant lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.
6 By decision of 23 September 2010 (‘the contested decision’), notified on 7 October 2010, the First Board of Appeal dismissed the appeal. It found, in essence, firstly, that the mark applied for consisted of two words which had a clear meaning in English and that the expression ‘natural beauty’ could serve to describe the fact that the goods in issue help the consumer to preserve his or her natural beauty, with the result that that expression conveyed obvious and direct information on the quality of the goods. Furthermore, the Board of Appeal took the view that the stylisation of the sign applied for was minimal and could not alter the conclusion that that sign was descriptive. It found that there was a sufficiently direct and specific relationship between the mark applied for and the goods at issue for the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 to apply. The Board of Appeal further took the view that, as the message conveyed by the sign applied for was so obvious and the stylisation of the descriptive terms making up that sign was negligible, that sign would not be perceived by the relevant public as a distinctive trade mark for the goods in question. In addition, in the light of the goods covered, the Board of Appeal took the view that the mark applied for would be used both in writing and orally and that the oral non-distinctiveness was even more obvious and striking than the visual non-distinctiveness. The Board of Appeal found that the mark applied for was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
7 The applicant claims that the General Court should:
– annul the contested decision;
– order OHIM to pay the costs of the proceedings, including those incurred in the context of the present action.
8 OHIM contends that the General Court should:
– dismiss the action;
– order the applicant to pay the costs.
9 In support of its action for annulment of the contested decision, the applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009 and, second, infringement of Article 7(1)(b) of that regulation.
10 It is appropriate to examine the first plea.
11 The applicant claims, in essence, that the mark applied for is not descriptive in so far as it does not consist exclusively of descriptive indications, but also includes a degree of stylisation.
12 OHIM disputes the merits of the applicant’s reasoning.
13 Under Article 7(1)(c) of Regulation No 207/2009, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographic origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered. Furthermore, Article 7(2) of Regulation No 207/2009 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
14 According to settled case‑law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, requiring that such signs or indications may be freely used by all (Case C‑191/01 P OHIM v Wrigley  ECR I‑12447, paragraph 31; Case T‑219/00 Ellos v OHIM (ELLOS)  ECR II‑753, paragraph 27; Case T-348/02 Quick v OHIM (Quick)  ECR II‑5071, paragraph 27; and judgment of 9 June 2010 in Case T‑315/09 Hoelzer v OHIM (SAFELOAD), not published in the ECR, paragraph 13).
15 Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which the registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquired the goods or service 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 (see judgment of 12 June 2007 in Case T‑339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published in the ECR, paragraph 28, and the case‑law cited; see, to that effect, OHIM v Wrigley, paragraph 30).
16 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 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 (see Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB)  ECR II‑2383, paragraph 24 and the case-law cited, and SAFELOAD, paragraph 15).
17 It follows that, for a sign to be caught by the prohibition set out in that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see LOKTHREAD, paragraph 29, and SAFELOAD, paragraph 16 and the case-law cited).
18 It should also be borne in mind that the assessment of the descriptiveness of a sign may be carried out only, first, in relation to the understanding of the sign on the part of the relevant public and, second, in relation to the goods or services concerned (see SAFELOAD, paragraph 17 and the case-law cited).
19 In the present case, as regards the relevant public, the Board of Appeal took the view, at paragraph 11 of the contested decision, that the assessment of the descriptive character must be carried out by reference to the average consumer of mass-consumption goods. That finding, which has not been called into question by the parties, must be upheld.
20 In addition, the applicant does not dispute the fact that the verbal elements of the mark applied for consist of two English words, ‘natural’ and ‘beauty’, as was noted by the Board of Appeal in paragraph 12 of the contested decision. Consequently, the relevant public, by reference to which the absolute ground for refusal must be examined, is the average English‑speaking consumer, as the Board of Appeal correctly found at paragraph 11 of the contested decision, without being contradicted by the applicant.
21 It is for that reason necessary to examine whether, as found by the Board of Appeal, the mark applied for has, from the point of view of the relevant public, a sufficiently direct and specific relationship with the goods in respect of which registration is sought.
22 In the present case, it is not disputed that the words ‘natural’ and ‘beauty’ have a clear meaning in English.
23 Further, at paragraph 13 of the contested decision, the Board of Appeal correctly found that, in the light of the goods covered, the public concerned would perceive the expression ‘natural beauty’ as a meaningful expression, capable of describing the fact that the goods covered help the consumer to preserve his or her natural beauty, and conveying, therefore, obvious and direct information on the quality of the goods. That finding is not called into question by the applicant, which, furthermore, confirmed during the hearing that it is not relying on the fact that the expression ‘natural beauty’ constitutes an unusual syntactical composition in English.
24 By contrast, according to the applicant, the Board of Appeal erred in finding the figurative element to be negligible. The applicant argues that the stylisation of the mark applied for distinguishes it from the common graphical features and that, consequently, the mark applied for is not composed exclusively of descriptive indications.
25 It must, however, be noted that, as the Board of Appeal correctly found at paragraph 16 of the contested decision, the stylisation of the mark applied for is limited to the addition of some common graphical features. In that regard, the Board of Appeal found that the use of the ordinary typeface was banal, while the fact that both words were written one over the other and that the ‘b’ within ‘beauty’ was slightly bigger than the rest of that word could not divert the consumer’s attention from the clear message conveyed by the descriptive words.
26 It must be pointed out that the graphical elements of the mark applied for consist, firstly, of the presentation of the element ‘natural’ placed above the element ‘beauty’ and, secondly, of the use of a certain typeface, the size used for the letter ‘b’ being different from that used for the other letters. However, it must be noted that those graphical elements are limited to the presentation of the two word elements and result from the use of common graphical methods. The typeface applied is banal and, contrary to the applicant’s assertions, the presentation, one above the other, of the two word elements cannot be regarded as unusual. Furthermore, the fact that the size of the letter ‘b’ is larger than that of the other letters of the word ‘beauty’ is barely perceptible, as is the position of the word ‘natural’, which is intended, somehow, to integrate that word into the element ‘beauty’. Those graphical elements cannot, as the applicant wrongly claims, give the impression of a logo, and those facts, by themselves, cannot confer a distinctive character on the sign applied for.
27 In view of the sobriety of the graphical means used, it must be held that, as found by the Board of Appeal at paragraph 16 of the contested decision, those banal graphical elements cannot divert the attention of the relevant public from the descriptive message resulting, in the present case, from the expression ‘natural beauty’.
28 It follows from the foregoing that the Board of Appeal acted correctly in finding that the mark applied for is descriptive within the terms of Article 7(1)(c) of Regulation No 207/2009.
29 It follows that the first plea must be rejected as unfounded.
30 As regards the second plea, it must be noted that, in order for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies (Case C-104/00 P DKV v OHIM  ECR I-7561, paragraph 29, and Case T‑160/07 Lancôme v OHIM – CMS Hasche Sigle (COLOR EDITION)  ECR II‑1733, paragraph 51). It follows that it is unnecessary to examine the second plea raised by the applicant, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
31 It follows from all of the foregoing considerations that the present action is unfounded and must be dismissed.
32 Under Article 87(2) 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. 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 (Eighth Chamber)
1. Dismisses the action;
2. Orders Laboratoire Garnier et Cie to pay the costs.
Delivered in open court in Luxembourg on 11 July 2012.