JUDGMENT OF THE GENERAL COURT (First Chamber)
31 January 2024 (*)
(EU trade mark – Application for the EU word mark AMAZING AIR – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑269/23,
AirDoctor, LLC, established in Sherman Oaks, California (United States), represented by K. Rantala, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by N. Lamsters and T. Klee, acting as Agents,
defendant,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni and S.L. Kalėda (Rapporteur), Judges,
Registrar: V. Di Bucci,
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 under Article 263 TFEU, the applicant, AirDoctor, LLC, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 March 2023 (Case R 2299/2022-4) (‘the contested decision’).
Background to the dispute
2 On 13 June 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign AMAZING AIR.
3 The mark applied for covers goods in Class 11 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, corresponding to the following description: ‘Air purifiers’.
4 By decision of 23 September 2022, the examiner rejected the application for registration of that trade mark on the basis of Article 7(1)(b) 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) of that regulation.
5 On 23 November 2022, 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. In essence, it found that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 in respect of the English-speaking general public and public made up of professionals in the European Union, in so far as it would be perceived as meaning ‘very good air’ and therefore as a laudatory statement in relation to the goods at issue, namely air purifiers.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
9 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. It claims that the Board of Appeal erred in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
10 In that regard, the applicant submits that the mere fact that the mark applied for could be regarded as a promotional formula or an advertising slogan, or that it is allegedly laudatory in nature, does not prevent it from having distinctive character.
11 Furthermore, according to the applicant, the word ‘amazing’ would not be immediately understood in the sense of ‘very good’, but rather in the sense of ‘very surprising’, ‘astonishing’, ‘astounding’ or ‘causing wonder’. Since air quality is not generally defined with such adjectives, the relevant public will not perceive the mark applied for as a laudatory message. The mark applied for is an unusual combination of words requiring at least some interpretation by the relevant public. Thus, the connection between the sign at issue and the goods covered by the mark applied for is not sufficient for that sign to be devoid of any distinctive character with regard to those goods.
12 EUIPO disputes the applicant’s arguments.
13 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
14 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
15 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
16 The notion of public interest underlying Article 7(1)(b) of Regulation 2017/1001, is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of origin of the goods or services covered by the mark to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see, to that effect, judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 48).
17 It is also apparent from the case-law that, although all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, require at least some interpretation by the relevant public or set off a cognitive process in the minds of that public (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 22 March 2017, Hoffmann v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 28).
18 It follows that a trade mark consisting of such signs or indications must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods or services in question (see judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 17 and the case-law cited).
19 It is in the light of those considerations that it must be examined whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, in finding that the mark applied for was devoid of any distinctive character.
20 In the first place, as regards the relevant public, the Board of Appeal found that the goods concerned were aimed at the general public and at the public made up of professionals, whose level of attention varies from average to high.
21 Furthermore, given that the mark applied for is made up of English words, the Board of Appeal based its assessment on the English-speaking public in the European Union.
22 Those findings of the Board of Appeal are not disputed by the applicant.
23 In the second place, as regards the relevant public’s perception of the meaning of the mark applied for with regard to the goods covered, the Board of Appeal found that the expression ‘amazing air’ would be understood as meaning ‘very good air’ and therefore referred to air of good quality. It thus concluded that the relevant English-speaking public would perceive the mark applied for as providing the purely laudatory information that the air purifiers improve air quality. According to the Board of Appeal, the same applies if the word ‘amazing’ is perceived as a synonym or superlative of the expression ‘very good’. Next, noting that there were no stylistic elements in the mark applied for, it concluded that the relevant public would immediately understand that the mark applied for was a promotional and laudatory message that served to highlight the positive aspects of the goods in respect of which registration was sought.
24 That assessment is correct.
25 First of all, it should be noted that, as the Board of Appeal correctly found, the sign applied for is formed in accordance with the rules of English grammar, does not constitute a play on words and does not have any unusual features. Although very subtle differences in the way it is understood are possible, that does not in any way imply that its meaning is vague, imprecise or ambiguous (see, to that effect, judgment of 13 December 2018, Knauf v EUIPO (upgrade your personality), T‑102/18, EU:T:2018:932, paragraph 28). With regard to the goods at issue, that sign always has the same meaning, namely that consumers can expect superior air quality.
26 Next, as regards the applicant’s argument that the word ‘amazing’ would be understood in the sense of ‘very surprising’, ‘astonishing’, ‘astounding’ or ‘causing wonder’, it must be held, as the Board of Appeal found, that those meanings will be perceived as synonyms or superlatives of the expression ‘very good’, conveying the same idea, namely that the goods at issue improve air quality.
27 Last, contrary to the applicant’s arguments, the sign at issue does not possess any originality or resonance, does not require at least some interpretation and does not set off a cognitive process in the minds of the relevant public within the meaning of the case-law cited in paragraph 17 above.
28 Since the relevant public is not very attentive if a sign does not immediately indicate to it the origin or intended purpose of the object of its intended purchase, but rather gives it purely promotional and abstract information, it will not take the time either to enquire into the various possible meanings of the expression constituting the sign applied for or to memorise it as a trade mark (see, to that effect, judgment of 24 September 2019, Daimler v EUIPO (ROAD EFFICIENCY), T‑749/18, not published, EU:T:2019:688, paragraph 39).
29 Consequently, in accordance with the case-law set out in paragraphs 17 and 18 above, the Board of Appeal was correct to find that the mark applied for would be perceived by the relevant public as a mere promotional slogan intended to highlight the positive characteristics of the goods at issue.
30 It follows from those considerations that the Board of Appeal made no error of assessment in finding that the mark applied for was devoid of any distinctive character in respect of the goods covered.
31 In the light of all the foregoing, the single plea must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.
Costs
32 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.
33 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders AirDoctor, LLC and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Spielmann | Mastroianni | Kalėda |
Delivered in open court in Luxembourg on 31 January 2024.
V. Di Bucci | | S. Papasavvas |