Case T-286/08

Fidelio KG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for Community word trade mark Hallux – Absolute ground for refusal – Article 7(1)(c) of Regulation (EC) No 40/94 (now Article 7(1)(c) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Application for registration of a sign for all products falling within the same category – Assessment of the descriptive character of the sign covering all the products

(Council Regulation No 40/94, Art. 7(1)(c))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of goods

(Council Regulation No 40/94, Art. 7(1)(c))

1.      When registration of a sign as a Community trade mark is sought without distinction for a category of goods as a whole and that sign is descriptive in relation to only some of the goods within that category, the ground for refusal in Article 7(1)(c) of Regulation No 40/94 on the Community trade mark nevertheless prevents registration of that sign for the whole of the category concerned.

(see para. 37)

2.      From the point of view of the relevant public, the word sign ‘Hallux’, registration of which is applied for in respect of ‘orthopaedic articles’ and ‘shoes’, falling respectively within Classes 10 and 25 of the Nice Arrangement, is descriptive in relation to the products covered by the application for a Community trade mark, for the purposes of Article 7(1)(c) of Regulation No 40/94 on the Community trade mark.

As regards orthopaedic articles, the relevant public consists of professionals in that area and patients suffering from malformations or malfunctions requiring correction by wearing such articles. It follows that the level of technical knowledge of the releant public must be regarded as high. The word ‘hallux’ means ‘big toe’ in Latin and is used, in scientific vocabulary, to designate several pathologies and malformations of the foot. Persons intending to purchase orthopaedic articles suitable for their pathology are likely, in general, to have inquired themselves or to have been informed of the scientific name of the pathology from which they suffer, or to be informed of it when they purchase orthopaedic articles suitable for their pathology. It is therefore likely that persons suffering from malformations of the big toe know that they are suffering from a pathology the name of which includes the word ‘hallux’, and it is reasonable to suppose that the section of the public concerned by orthopaedic articles suitable for malformations of the big toe which has not yet become familiar with the word ‘hallux’ is likely to be informed of the meaning of that word when purchasing those articles. Consequently, in the mind of the public concerned by orthopaedic articles designed to deal with pathologies of the big toe, the word ‘hallux’ will evoke the pathology itself. The relevant public concerned by the articles is therefore capable of establishing, without having to give the matter any particular thought, a specific link between the word ‘hallux’ and the intended purpose of those goods.

As regards shoes, it is necessary to assess the perception of the word ‘hallux’ by the average, reasonably well-informed and reasonably observant and circumspect consumer. However, within the category of footwear in general, there is the distinct subcategory of comfortable shoes. This specific subcategory of footwear, although not specifically designed for patients suffering from hallux valgus, is nevertheless suitable for them and limits the development of their pathology. The public concerned by this specific subcategory of footwear partially overlaps with the public concerned by the orthopaedic articles suitable for big toe pathologies, of whom it has been established that they knew the meaning of the word ‘hallux’ or were likely to be told of it. Moreover, the public concerned by comfortable shoes also includes persons who, while they do not need to wear orthopaedic articles, are nevertheless either directly afflicted with foot pathologies or aware of those matters and likely to pay special attention in that regard. Although it is true that comfortable shoes are purchased without a doctor’s prescription, the sellers of those shoes are nevertheless likely to give explanations and advice to persons suffering from big toe pathologies and, in particular, to inform them of the name of the pathologies for which comfortable shoes are suitable. In those circumstances, consumers of comfortable shoes marketed under the trademark Hallux would perceive that sign as indicating that the goods in question are particularly suitable for persons afflicted with big toe pathologies. Thus, in respect of the subcategory of comfortable shoes at least, the sign ‘hallux’ describes the intended purpose of the goods covered by the application for registration. Consequently, that sign cannot be registered for the whole of the category.

(see paras 42, 48-49, 53, 55-57)