JUDGMENT OF THE GENERAL COURT (Second Chamber)
23 November 2022 (*)
(EU trade mark – International registration designating the European Union – Word mark GENERAL PIPE CLEANERS – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑151/22,
General Wire Spring Co., established in McKees Rocks, Pennsylvania (United States), represented by E. Carrillo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and W. Valasidis, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, General Wire Spring Co., seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 January 2022 (Case R 1452/2021-5) (‘the contested decision’).
Background to the dispute
2 On 21 August 2020, the applicant designated the European Union for international registration No 1577530 in respect of the word sign GENERAL PIPE CLEANERS.
3 The goods in respect of which protection of the international registration was sought were in, inter alia, Classes 7 and 9 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 corresponded, for each of those classes, to the following description (‘the goods at issue’):
– Class 7: ‘Devices for cleaning drains and pressure washing, namely, machines for cleaning drains and pressure washing; devices for cleaning drains, namely, cleaning machines for drains; parts for machine tools, namely, snakes as part of power-operated sewer augers; devices for cleaning clogged drains, namely, machines for cleaning clogged drains; machine parts, namely, connectors for drain-cleaning machine cables and snakes; machine parts, namely, connectors for power-operated drain-cleaning machine cables and snakes; machines for thawing frozen pipes’;
– Class 9: ‘Video inspection system for use in pipe and conduits, comprised of video camera, cable, video display, and position locator’.
4 By decision of 23 June 2021, the examiner rejected the application for protection of the international registration in the European Union, in so far as it covered, inter alia, the goods at issue, on the basis of Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 7(2) thereof.
5 On 23 August 2021, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6 By the contested decision, the Board of Appeal dismissed the appeal.
7 First, the Board of Appeal found that the sign applied for was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, since there was, for the relevant English-speaking public, a direct and specific relationship between the expression ‘general pipe cleaners’ and the kind, type and intended purpose of the goods at issue.
8 Second, the Board of Appeal also found that the sign applied for was not distinctive for the purposes of Article 7(1)(b) of Regulation 2017/1001, since it did not serve to identify the origin of the goods at issue.
9 Third, the Board of Appeal rejected the applicant’s arguments relating, on the one hand, to the registration by EUIPO of allegedly comparable marks in respect of the goods at issue and, on the other, to the registration of the sign applied for, in connection with those goods, in the United States.
Forms of order sought
10 The applicant claims that the Court should annul the contested decision.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 The applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, second, infringement of Article 7(1)(b) of Regulation 2017/1001, and third, failure to take into account the registration of the sign applied for, in connection with the same goods, in the United States.
Admissibility of certain documents annexed to the application
13 As a preliminary point, EUIPO contends that several documents, in Annexes 5 to 9 to the application, which have been submitted for the first time before the Court and which were not included in the case file relating to the administrative proceedings brought before it, should be rejected as inadmissible.
14 Those documents concern respectively the results of a search regarding the term ‘cleaners’ carried out on an online search engine, the results of a search regarding the term ‘cleaner’ carried out on a free and collaborative online encyclopaedia and three printouts from websites which use the term ‘cleaner’ to designate persons entrusted with certain tasks.
15 Those documents, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
16 The inadmissibility of those documents cannot, however, prevent the applicant from relying on the argument, previously raised during the administrative proceedings before EUIPO, that the word ‘cleaner’ is understood as a term designating a person carrying out a cleaning task rather than as a term denoting a device.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
17 The applicant criticises a number of assessments made by the Board of Appeal in the part of the contested decision dedicated to Article 7(1)(c) of Regulation 2017/1001. In particular, it submits that the expression ‘general pipe cleaners’ does not directly provide information about the goods at issue and that consumers will not immediately establish a direct link with those goods or their characteristics.
18 EUIPO disputes the applicant’s arguments.
19 Under Article 7(1)(c) of Regulation 2017/1001, 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. Under Article 7(2) of that regulation, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
20 Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely identifying the commercial origin of the goods or services (see, to that effect, judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
21 For a sign to come within the scope of the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
22 A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
The level of attention of the relevant public
23 The Board of Appeal stated that the goods at issue were intended for a public with an above-average level of attention. In that regard, it found that the examiner’s assessment that the relevant public consisted of professionals in plumbing was not called into question by the applicant, which had claimed that a part of those goods was also directed at the public at large who were DIY enthusiasts. According to the Board of Appeal, since DIY enthusiasts, like plumbing professionals, would be aware of the specificities of the goods at issue, their application and their use, their level of attention would also be above average when purchasing those goods.
24 The applicant criticises that analysis on the ground that, once the Board of Appeal has acknowledged that part of the relevant public consists not of plumbing professionals, but of the public at large, it is necessary to take into account the ‘ordinary’ level of attention of that part of the relevant public. That level of attention, which is lower than that taken into account by the Board of Appeal, would have likely had an impact on the understanding and interpretation of the sign applied for.
25 That criticism cannot be accepted. It must be borne in mind that the level of attention of the average consumer, including of the general public, is likely to vary according to the category of goods or services covered (see judgment of 3 May 2018, Raise Conseil v EUIPO – Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraph 37 and the case-law cited). The applicant could not therefore confine itself to maintaining that the general public which makes up the relevant public would display an ‘ordinary’ level of attention, without further explanation. Moreover, the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the descriptive or distinctive character of a sign (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 14 and the case-law cited). The applicant has not shown that the fact that a part of the relevant public allegedly displays an ‘ordinary’ level of attention has a decisive influence in the present case on the assessment of the descriptive character of the sign applied for.
26 The Board of Appeal was therefore entitled to conclude in the present case that it was not appropriate for it to consider that the greater degree of attention paid by the relevant public, whether plumbing professionals or DIY enthusiasts, constituted a determining factor for its assessment.
The English-speaking public concerned
27 The Board of Appeal found that, since the sign applied for included words which were in everyday usage in English, the assessment of the registrability of the mark applied for was to be based on the English-speaking part of the public of the European Union, which at the very least includes the public in the Member States in which English is an official language, namely Ireland and Malta.
28 That assessment is not disputed by the applicant and it is not appropriate for the Court to call it into question.
The meaning of the sign applied for
29 The Board of Appeal stated that the sign applied for combined the terms ‘general’, ‘pipe’ and ‘cleaners’ and that those individual terms had a meaning. According to the extracts from the Collins English Dictionary cited by the Board of Appeal in the contested decision, the word ‘general’ is a very basic English word that denotes the sense of belonging to or something prevailing through a whole class of things; the word ‘pipe’ refers to ‘a long tube of metal, plastic, etc., used to convey water, oil, gas, etc.’, that word being banal in the plumbing field, and the word ‘cleaner’ could refer, in a broad sense, to any device for cleaning.
30 Consequently, the Board of Appeal found that the combination of the abovementioned terms, which was grammatically correct and complied with English syntax, was perfectly comprehensible in English and that the information contained in that combination would be instantly apparent for the English-speaking public. The Board of Appeal concluded that the expression ‘general pipe cleaners’ would be understood by the relevant public as meaning ‘a device used for cleaning pipes’ in respect of the goods at issue.
31 The applicant criticises that finding by claiming that the expression ‘general pipe cleaners’ is an unusual combination, which does not describe any of the goods at issue or their characteristics, but conveys only an evocative or suggestive message in connection with those goods. That expression cannot be understood by the relevant public as referring to a device, given that a ‘cleaner’ is a person who carries out a specific job. That expression means, literally and without being clear, domestic or industrial workers who clean ‘general’ pipes.
32 Nevertheless, it is sufficient to note, as EUIPO submits, that a word sign must be refused registration under Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 15 September 2021, Beelow v EUIPO (made of wood), T‑702/20, not published, EU:T:2021:589, paragraph 38).
33 Consequently, even if, as the applicant claims, the word ‘cleaner’ could have another meaning, the Board of Appeal was entitled to find in the contested decision that one of the potential meanings of the combination of the terms ‘general pipe cleaners’, namely ‘a device used for cleaning pipes’ (see paragraph 30 above), was grammatically correct and complied with English syntax, was not unusual, and conveyed a clear and unambiguous message that would be instantly apparent for the English-speaking part of the public of the European Union.
The relationship between the sign applied for and the goods at issue
34 The Board of Appeal found the following in order to establish a sufficiently direct and specific relationship between the sign applied for and the goods at issue.
35 First, as regards the goods in Class 7, the Board of Appeal noted that, for a number of them, it was expressly stated that those goods were intended for cleaning drains. Therefore, the Board of Appeal found that the relevant public would easily recognise the sign applied for as providing information about a characteristic or essential element of those goods, which were intended for cleaning drains. According to the Board of Appeal, the same considerations would apply to the connectors (cables and snakes) used for devices for cleaning drains.
36 Second, as regards the other goods at issue in Class 7, which concern ‘snakes as part of power-operated sewer augers’ and machines for thawing frozen pipes, the Board of Appeal noted that those goods contained an implicit reference to cleaning pipes. Whether sewer augers, also known as drain augers or drain cleaners, or machines used to remove blockage in pipes caused by frozen water are concerned, the link between the sign applied for and those goods is sufficiently close for the sign to come within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001.
37 Third, as regards the goods at issue in Class 9, the Board of Appeal stated that, even though they did not refer to cleaning, their definition implied that they could be used for general pipe-cleaning purposes. It is stated that the ‘video inspection system’ is intended ‘for use in pipe and conduits’, which suggests that the use of such a product is to determine whether a blockage has occurred and that that use is necessary for the operation of a general pipe cleaner. The sign applied for thus indicates that those goods are broadly adapted for use for general pipe cleaning.
38 According to the applicant, since the word ‘cleaner’ is commonly used to designate a person entrusted with cleaning tasks, and not to designate goods or devices, there is no sufficient link between the sign applied for and the goods at issue. It also submits the following in respect of the various categories examined by the Board of Appeal. First, as regards the goods in Class 7 which are either expressly stated to be intended for cleaning, or the connectors used for devices for cleaning drains, the applicant claims that the sign applied for does not describe but merely evokes a potential use for cleaning. That sign merely conveys an indirect message that may evoke cleaning. Second, as regards the other goods in Class 7, implicitly referring to ‘cleaning pipes’, the applicant asserts that the Board of Appeal undertook a complex interpretation not corresponding to the real immediate perception of the relevant public. Third, it claims that the same is true of the goods in Class 9. In its submission, too many mental steps are necessary to link the conceptual meanings, purposes and characteristics of the goods at issue with the sign applied for.
39 In that regard, it should be borne in mind that the fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32).
40 Therefore, for the reasons set out in the contested decision and as EUIPO submits, the Board of Appeal was entitled to find that the sign applied for had a sufficiently direct and specific relationship with the goods at issue to enable the relevant English-speaking public immediately to perceive, without further thought, a description of one of the essential characteristics of those goods, which are devices or parts of devices used for cleaning drains.
41 The description of the abovementioned characteristic by the sign applied for is reasonably conceivable for the relevant public, both for the goods covered by Class 7 which expressly refer to their use for the cleaning of drains and for those in Class 7 and those in Class 9 which refer specifically to drain augers, frozen pipes or more broadly to pipes and conduits, which does present a sufficiently direct and specific relationship with general pipe cleaning.
42 Similarly, for the reasons already set out when examining the meaning of the sign applied for, it cannot be held that the fact that the word ‘cleaner’ might have more than one definition or that the expression ‘general pipe cleaners’ might be understood as referring to people and not to devices precludes the Board of Appeal from taking account of the meaning correctly referred to in the contested decision.
The outcome of the Board of Appeal’s assessment
43 Consequently, the Board of Appeal was correct to find that the sign applied for was descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation 2017/1001. The meaning of the sign applied for was neither allusive nor suggestive since there was a direct and specific relationship between the expression ‘general pipe cleaners’ and the kind, type and intended purpose of the goods at issue, which were devices for cleaning drains, parts of those devices or goods whose primary purpose was to be used in that context.
44 That assessment is not called into question by the applicant’s last argument that the connection commonly made in the crafts sector between the expression ‘pipe cleaners’ and a type of brush originally intended for removing moisture and residue from smoking pipes should have led the Board of Appeal to establish the possible uses of ‘general pipe cleaners’ in respect of cleaning pipes.
45 With a view to ensuring that the objective of free use is fully met, it is not necessary, for a sign to be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001, that that sign actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 38). The Board of Appeal was therefore not required to provide any evidence to show that the sign applied for was commonly used in trade in a way that is descriptive of the goods in respect of which registration was sought.
46 It follows from the foregoing that the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
47 The applicant submits that the Board of Appeal erred in finding that the mark applied for was devoid of distinctiveness for the purposes of Article 7(1)(b) of Regulation 2017/1001. Thus, in its submission, it is incorrect to consider that the expression ‘general pipe cleaners’ is not capable of distinguishing the goods at issue. That assessment does not take into account the different characteristics and nature of those various goods.
48 EUIPO disputes the applicant’s arguments.
49 It must be borne in mind that each of the grounds for refusal to register listed in Article 7(1) of Regulation 2017/1001 is independent of the others and calls for separate examination (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 45 and the case-law cited).
50 Since it is apparent from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign to be ineligible for registration as an EU trade mark, there is no need to examine the merits of the second plea in law relied on by the applicant, alleging infringement of Article 7(1)(b) of that regulation.
51 It follows from the foregoing that, since the first plea in law has been rejected, there is no need to examine the second plea in law.
The third plea in law, alleging failure to take into account the registration of the sign applied for, in connection with the same goods in the United States
52 The applicant claims that the Board of Appeal failed to take due account of the granting of registration of the sign applied for in respect of the same goods in the United States. That registration is, however, relevant for the purpose of establishing that that sign is not descriptive of the goods at issue for a fully English-speaking public.
53 EUIPO disputes the applicant’s arguments.
54 In the present case, it is apparent from the contested decision that the Board of Appeal did take into consideration in its assessment the argument relating to the registration of the sign applied for in the United States. Thus, it recalled that, in so far as such a registration is relevant for assessing the registrability of the sign applied for in countries where the same language as that on which EUIPO based its objections is spoken, it is sufficient to note that such a registration, in accordance with the rules applicable in those countries, does not enable it to be established that, in the present case, the examiner erred in her application of Article 7(1)(b) and (c) of Regulation 2017/1001 (see, to that effect, judgment of 17 January 2019, Ecolab USA v EUIPO (SOLIDPOWER), T‑40/18, not published, EU:T:2019:18, paragraph 46).
55 In that context, that examiner cannot be accused of having erred in her application of Article 7(1)(b) and (c) of Regulation 2017/1001. As stated in the contested decision, first, the provisions that appear under Chapter XIII of Regulation 2017/1001 do not lay down any obligation for EUIPO to recognise decisions on the registration of an international mark taken in third countries. Second, the EU trade mark regime is an autonomous system, made up of a set of rules and pursuing objectives specific to it, its application being independent of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the sign in question originated (see judgment of 17 January 2019, SOLIDPOWER, T‑40/18, not published, EU:T:2019:18, paragraph 47 and the case-law cited).
56 It follows from the foregoing that the third plea in law must be rejected and, consequently, that the action must be dismissed in its entirety.
Costs
57 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.
58 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders General Wire Spring Co. to pay the costs.
Marcoulli | Frimodt Nielsen | Valasidis |
Delivered in open court in Luxembourg on 23 November 2022.