JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
3 June 2015 (*)
(Community trade mark — Invalidity proceedings — Community word mark essence — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — No distinctive character — Article 7(1)(b) of Regulation No 207/2009)
In Case T‑448/13,
Bora Creations, SL, established in Ceuta (Spain), represented by R. Lange, G. Hild and C. Pape, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Beauté Prestige International, established in Paris (France), represented by T. de Haan and P. Péters, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 6 June 2013 (Case R 1085/2012-5), relating to invalidity proceedings between Beauté Prestige International, and Bora Creations, SL,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 21 August 2013,
having regard to the response of OHIM lodged at the Court Registry on 3 December 2013,
having regard to the response of the intervener lodged at the Registry of the Court on 22 November 2013,
further to the hearing on 14 January 2015,
gives the following
Judgment
Background to the dispute
1 On 30 May 2011 the applicant, Bora Creations, SL, was granted registration of the Community word mark essence under number 6816144 by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). That registration had been applied for on 7 April 2008.
2 The goods for which the trade mark essence was registered are, in particular, within 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: ‘Hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, false eyelashes, nail care products (included in Class 3), varnishes, nail varnish removers, products for modelling and making false fingernails (included in Class 3)’.
3 On 18 August 2011 the intervener, Beauté Prestige International, filed with OHIM, pursuant to Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), an application for a declaration of invalidity of the mark at issue for the goods referred to in paragraph 2 above, on the grounds that that mark had been registered in breach of Article 7(1)(b) and (c) of Regulation No 207/2009.
4 On 10 April 2012 the Cancellation Division rejected the application for a declaration of invalidity.
5 On 8 June 2012 the intervener filed an appeal against the decision of the Cancellation Division in accordance with Article 58 of Regulation No 207/2009.
6 By decision of 6 June 2013 (‘the contested decision’), the Fifth Board of Appeal partially annulled the decision of the Cancellation Division by declaring the invalidity of the mark at issue for ‘hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, nail varnishes, nail varnish removers and nail care products’ included in Class 3.
7 By contrast, the Board of Appeal dismissed the appeal and declared the mark at issue valid in respect of ‘false eyelashes’, and ‘products for modelling and making false fingernails’ included in Class 3.
8 Finally, it ordered each party to bear its own costs, incurred for the purposes of the cancellation and appeal proceedings.
9 In substance, the Board of Appeal found that the word ‘essence’, which was not rare or unusual, referred to plant extracts which can be used as a scent or perfume and could also refer to a concentrate of such an extract. As such, this word gives a clear and unequivocal message relating to an attribute of cosmetic products.
10 Next, the Board of Appeal assessed the goods concerned individually and found that many of those goods could in fact be described by the word ‘essence’ and accordingly, that for the goods set out at paragraph 6 above, the mark at issue had been registered in breach of Article 7(1)(c) of Regulation No 207/2009.
11 It also took the view that that registration had been made in breach of Article 7(1)(b) of Regulation No 207/2009, in that the mark at issue was purely descriptive in respect of the goods concerned, and in that it was not capable of identifying the origin of those goods.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision to the extent that the Board of Appeal declared the mark at issue to be invalid;
– order OHIM to pay the costs.
13 At the hearing the applicant limited the scope of its application, stating that it now sought cancellation of the contested decision only in relation to ‘decorative cosmetics’ and ‘nail varnishes’.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including the costs necessarily incurred for the purposes of the proceedings before OHIM.
Law
16 In support of its action 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.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
17 The applicant disputes the determination of the Board of Appeal as to the existence of a sufficiently direct and specific link between the goods concerned, namely, ‘decorative cosmetics’ and ‘nail varnishes’, so that the mark at issue could be qualified as descriptive in the sense of Article 7(1)(c) of Regulation No 207/2009.
18 OHIM, supported by the intervener, challenges the merits of the applicant’s arguments.
19 Article 52(1)(a) of Regulation No 207/2009 provides that a Community trade mark is to be declared invalid where that trade mark has been registered contrary to the provisions of Article 7 of that regulation. Article 7(1)(c) of Regulation No 207/2009 provides that ‘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.
20 Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that signs or indications which may serve in trade to designate characteristics of the goods or services for which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications being reserved to one undertaking alone because they have been registered as trade marks (see, to that effect, judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 62 and the case-law cited).
21 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (judgment of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraph 25).
22 The descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is applied for and, second, in relation to the perception of the relevant public, which is composed of the consumers of those goods or services (judgment of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 30).
23 As to the relevant public, it is not contested that, in the present case, as the Board of Appeal observed at paragraph 12 of the contested decision, the relevant public consists of the average consumer of the products concerned who is reasonably well informed and reasonably observant and circumspect. Taking into account the type of products that are the object of the proceedings, the Court must find, as did the Board of Appeal, that the relevant public in the present case has an average level of attention. Lastly, given that the Board of Appeal limited itself to analysing the meaning of the word ‘essence’ in English, and that in accordance with Article 7(2) of Regulation No 207/2009 absolute grounds for refusal apply even if they exist in only one part of the European Union, it is also appropriate to take as a basis the level of understanding of the Anglophone public in the context of the present analysis.
24 It is, therefore, necessary to consider whether, in accordance with the case-law cited at paragraphs 20 to 22 above, there exists from the point of view of the relevant public, as defined above, a sufficiently direct and real connection between the mark at issue and ‘decorative cosmetics’ and ‘nail varnishes’.
25 At paragraph 10 of the contested decision the Board of Appeal set out various definitions of the English word ‘essence’ as they appear in English dictionaries, that is to say, ‘an extract obtained from a plant, or from a medicinal, odoriferous or alimentary substance by distillation or by other process, and containing its characteristic properties in a concentrated form’ (Oxford English Dictionary); ‘a liquid that contains the strong taste or smell of the plant that it is taken from’ (Macmillan Dictionary); ‘the constituent of a plant, usually an oil, alkaloid, or glycoside, that determines its chemical or pharmacological properties’ and ‘a substance usually liquid, containing the properties of a plant or foodstuff in concentrated form’ (Collins Dictionary) or, in other words, ‘an extract that has the fundamental properties of a substance in concentrated form’ (Free online dictionary). It also stated that the word is a synonym of ‘odour’ and of ‘perfume’ (Merriam Webster Dictionary) as well as of ‘spirit, potion, extract, concentrate, perfume, fragrance, scent’ (Word Reference Thesaurus).
26 The Board of Appeal found, at paragraphs 11 and 17 of the contested decision, that the word ‘essence’ referred to plant extracts which can be used as a scent or perfume and could also refer to a concentrate of such an extract. Thus, in its view, an ‘essence’ could be a more concentrated version of the main product (like a face cream), or a product consisting of a scent (like an eau de toilette), or could also be used in conjunction with a product which is scented and chosen on the basis of its scent, even though it may primarily serve other needs (like a soap). The word ‘essence’ is not an unusual or rarely used word and conveys a clear and unequivocal message concerning an attribute of the products in question.
27 The applicant argues that the decision of the Board of Appeal did not take account of the fact that those definitions are too vague to establish a sufficiently direct and specific link between the mark and the products concerned. By way of example, the definition of the word ‘essence’ as an ‘extract that has the fundamental properties of a substance in a concentrated form’, would give the consumer a vague idea of the goods but would not describe them in a sufficiently clear and detailed manner to be descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009. Furthermore, those definitions would represent only some of the definitions amongst the great variety of possible definitions of the word ‘essence’.
28 As has already been mentioned at paragraph 20 above, the public interest underlying Article 7(1)(c) of Regulation No 207/2009 is that of ensuring that signs descriptive of one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services.
29 By using in that provision the terms ‘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’, the EU legislature made it clear, first, that those terms must all be regarded as characteristics of goods or services and, second, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 10 July 2014 in BSH v OHIM, C‑126/13 P, EU:C:2014:2065, paragraph 20 and the case-law cited).
30 On the other hand, the fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in that provision 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 (see judgment in BSH v OHIM, cited in paragraph 29 above, EU:C:2014:2065, paragraph 21 and the case-law cited).
31 A sign may, therefore, be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 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 judgment in BSH v OHIM, cited in paragraph 29 above, EU:C:2014:2065, paragraph 22 and the case-law cited).
32 In the present case the goods concerned are cosmetic products and as such can contain or consist of extracts, in particular plant extracts, perhaps in the form of a concentrate or a perfume. Consequently, the Board of Appeal was entitled to hold that one of the possible meanings of the mark at issue would be a product manufactured on the basis of an essence or containing an essence, and that the connection between this meaning and the goods concerned is sufficiently direct and real to allow the relevant public to recognise directly, and without the need for further thought, the description of such a quality of the goods concerned, indeed of their nature.
33 In accordance with settled case-law, a verbal sign may be refused registration pursuant to Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 32). Moreover, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary (see, by analogy, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 102).
34 Further, it should be noted that, even if it is not necessary that the sign at issue be used in a way that is descriptive, but only that it could be used for such purposes (judgment in OHIM v Wrigley, cited in paragraph 33 above, EU:C:2003:579, paragraph 32) or that that should be the only way of designating some characteristics of the goods (see, by analogy, judgment in Koninklijke KPN Nederland, cited in paragraph 33 above, EU:C:2004:86, paragraph 57), examples of the use on the market of the word ‘essence’ presented by the applicant, show that that term is currently used in the sense indicated by the Board of Appeal. Contrary to what the applicant maintains, the fact that the word ‘essence’ is combined with other words, does not show that it is ambiguous and vague and can become descriptive only when it is used in such combinations. The examples given consist only of words specifying what particular essence a product contains.
35 More particularly, the Board of Appeal considered that ‘for … decorative cosmetics … the word “essence” [was] descriptive not because those goods are necessarily scented but in the sense of it being a concentrate’ and that ‘upon seeing these goods bearing the word “essence”, the public will perceive that they consist of a concentrated version of a cosmetic preparation or active ingredient (which usually also exists in an ordinary, non-concentrated form)’ (contested decision, paragraph 24).
36 Further, as to ‘nail varnishes’ the Board of Appeal determined that they ‘[could] also be produced from “an extract that has fundamental properties of a substance in concentrated form” [and that therefore] the word “essence” merely indicate[d] the nature and content (an essential characteristic) of the product at issue’ (contested decision, paragraph 26).
37 The applicant disputes those conclusions, maintaining that ‘decorative cosmetic goods’ are not used in a concentrated form, and are not manufactured from a concentrate. That misunderstanding arises from the fact that the Board of Appeal did not carry out an individual analysis for those specific goods.
38 The finding of the Board of Appeal concerning ‘nail varnishes’ is, according to the applicant, incorrect too because those goods do not exist in a concentrated form, while Article 7(1)(c) of Regulation No 207/2009 prevents registration of signs that indicate a characteristic of the product concerned and not a characteristic of a raw material of that product.
39 In that regard, it should be noted that, contrary to what the applicant states, it follows from the wording (see paragraph 35 above) and from the context (see, in particular, paragraphs 25 and 26 above) of paragraph 24 of the contested decision, that the Board of Appeal took the view that the mark at issue could be descriptive of ‘decorative cosmetics’ also in the sense that those products can be perfumed. Further, in this regard it is to be noted, as did OHIM, that those goods represent a very broad category of products and not only those mentioned by the applicant during the hearing.
40 In any event, and without it being necessary to rule on the question of whether all the goods falling under the description ‘decorative cosmetics’ and ‘nail varnishes’ contain perfumes or concentrates, it is to be noted that those goods, as cosmetic goods, can contain or consist of extracts, in particular plant extracts, possibly in concentrated form, or be perfumed. This characteristic constituting a significant property, indeed quality, of the goods concerned, it creates a direct real link between the mark at issue and the goods concerned.
41 Therefore, the Board of Appeal did not err in finding, at paragraphs 24 and 26 of the contested decision, that the relevant consumer would perceive the word ‘essence’ placed on ‘decorative cosmetics’ and ‘nail varnishes’ as indicating that the goods are made from (or consist of) an extract from a substance, in particular a plant, and possibly in concentrated form, or perhaps perfumed. Moreover, contrary to what the applicant submits, the fact that the goods concerned are presented in a solid not liquid form, is not relevant in that regard, for the fact that a product such as a powder compact or a lipstick is a product in solid form does not prevent it, for example, from being made from plant extracts.
42 Concerning the applicant’s argument that the trade mark at issue merely alludes to specific goods or to a characteristic of those goods and that it requires a certain amount of interpretation, that cannot be upheld either. It follows from the analysis made that the mark at issue can describe clearly one of the characteristics of the products concerned, namely, that they contain or consist of extracts which possess the fundamental properties of a substance, in a concentrated form or are perfumed.
43 In this respect, it is necessary to dismiss the applicant’s argument that the precise term ‘essence’ exists only in English and French. As is recalled at paragraph 23 above, in accordance with Article 7(2) of Regulation No 207/2009, paragraph 1 of that article applies even if the grounds for refusal exist only in one part of the European Union.
44 Lastly, concerning the French registration of a mark identical to the trade mark applied for, to which the applicant refers, it is to be observed that the Board of Appeal is not bound by decisions in the Member States concerning trade marks, the system of Community marks being an autonomous system whose application is independent of any national system. Possible registrations existing in Member States constitute only a fact which may be taken into consideration in the context of registration of a Community mark and the trade mark applied for must be assessed on the basis of the relevant EU legislation (judgment of 11 December 2013 in Smartbook v OHIM (SMARTBOOK), T‑123/12, EU:T:2013:636, paragraph 51).
45 It follows from the foregoing that the Board of Appeal was right to hold that the mark at issue was descriptive of ‘decorative cosmetics’ and ‘nail varnishes’ for the purpose of Article 7(1)(c) of Regulation No 207/2009.
46 Consequently, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
47 It must be pointed out that, as is evident from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a Community trade mark (see judgment of 16 March 2006 in Telefon & Buch v OHIM — Herold Business Data (WEISSE SEITEN), T‑322/03, ECR, EU:T:2006:87, paragraph 110 and the case-law cited).
48 Consequently, having regard to the finding at paragraph 45 above, there is no need to adjudicate on the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
49 It follows from all the foregoing that the action must be dismissed in its entirety.
Costs
50 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 and the intervener.
51 Furthermore, the intervener claims that the applicant should be ordered to pay the costs incurred by the intervener for the purposes of the appeal proceedings before OHIM. In that regard, it must be pointed out that, pursuant to Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are to be regarded as recoverable costs, with the result that they are covered by the applicant’s being ordered to pay the costs under Article 87(2) of the Rules of Procedure, as stated in paragraph 50 above (see, to that effect, judgment of 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, EU:T:2013:68, paragraph 64 and the case-law cited).
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Bora Creations, SL to pay the costs.
Delivered in open court in Luxembourg on 3 June 2015.
[Signatures]