JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
29 March 2012 (*)
(Community trade mark – International registration – Request for territorial extension of protection – Figurative mark 3D eXam – Absolute grounds for refusal – Descriptive character and lack of distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑242/11,
Kaltenbach & Voigt GmbH, established in Biberach an der Riß (Germany), represented by M. Graf, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 1 March 2011 (Case R 2361/2010-2) relating to a territorial extension to the European Union, of the protection of the international registration of the figurative mark 3D eXam,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen, President, N. Wahl (Rapporteur) and S. Soldevila Fragoso, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 May 2011,
having regard to the response lodged at the Court Registry on 19 July 2011,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 22 December 2008, the applicant, Kaltenbach & Voigt GmbH, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration of the figurative mark in the word form reproduced below for goods in Class 10 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, which correspond to the following description: ‘X-ray apparatus for dental purposes’.
2 On 26 February 2009, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received an application for registration of the mark in question as a Community word mark. No graphic feature was claimed.
3 By decision of 27 September 2010, the examiner refused protection of the international mark in the European Union, pursuant to Article 7(1)(b) and (c) and (2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
4 On 29 November 2010, the applicant lodged an appeal with OHIM against the examiner’s decision.
5 By decision of 1 March 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the ground that the sign 3D eXam was, for the goods claimed, descriptive, for the purposes of Article 7(1)(c) of Regulation No 207/2009 and devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation.
6 First of all, the Board of Appeal found that the goods claimed were targeted at a specialist public from the medical field, composed particularly of dentists. Those specialists know that the purpose of the goods covered by the mark applied for, namely X-ray apparatus for dental purposes, is to make possible an X-ray dental examination in three dimensions.
7 The Board of Appeal also found that the mark applied for consists of an English term, and therefore the focus in this case will be on English‑speaking consumers in the Member States of the European Union.
8 Next, the Board of Appeal found that the two elements making up the sign 3D eXam are individually descriptive in respect of X-ray apparatus for dental purposes. Although the element ‘3d’ is a commonly used abbreviation of the word ‘three-dimensional’, and not only in English, the word ‘exam’ is either an English word which means ‘medical test of a specified kind’, or it could be seen as an abbreviation of the word ‘examination’, which means ‘detailed inspection or study such as a medical examination’.
9 With respect to those two elements, considered as a whole, the Board of Appeal found that the relevant specialist public would perceive the expression ‘3d exam’, in relation to the goods covered by the mark applied for, as an abbreviation of a dental X-ray examination in 3D.
10 Consequently, the Board of Appeal concluded that, in respect of the goods covered by the mark applied for, the expression ‘3d exam’ is an exclusively descriptive indication for the purposes of Article 7(1)(c) of Regulation No 207/2009.
11 With respect to the lack of distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal stated that, in relation to the goods covered by the international registration (X-ray apparatus for dental purposes), the relevant public will understand the expression ‘3d exam’ as referring, as a whole and in general, to an X-ray examination in three dimensions. It added that there is no additional element which allows the view to be reached that the combination, created by the components ‘3d’ and ‘exam’, is unusual or might have its own meaning, which distinguishes the goods designated by the international registration from those of a different commercial origin. It follows that the mark 3D eXam does not possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant puts forward three pleas in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009 and Article 7(1)(b) thereof, respectively, and failure to take into account prior national registrations or grants of protection.
15 OHIM disputes the arguments put forward by the applicant in support of its pleas.
First plea: infringement of Article 7(1)(c) of Regulation No 207/2009
16 By the first plea, the applicant claims, in essence, that the sign 3D eXam is not descriptive of the goods concerned.
17 In that regard, it should be borne in mind that, 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, 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. Furthermore, Article 7(2) of Regulation No 207/2009 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
18 According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that indications or signs which are descriptive of the characteristics of the goods or services in respect of which registration is sought may be freely used by all (see judgment of 12 June 2007 in Case T‑339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published in the ECR, paragraph 27 and the case-law cited).
19 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which 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 services, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see LOKTHREAD, paragraph 18 above, paragraph 28 and the case-law cited).
20 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific 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 18 above, paragraph 29 and the case-law cited).
21 If a mark which consists of a neologism or a word produced by a combination of elements is to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components be found to be descriptive. The neologism or word itself must also be found to be descriptive (see LOKTHREAD, paragraph 18 above, paragraph 30 and the case-law cited).
22 A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. T hat assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of indications arising from its constituent elements, with the result that it is more than the sum of its parts. In that regard, the analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see LOKTHREAD, paragraph 18 above, paragraph 31 and the case-law cited).
23 It should also be borne in mind that a sign’s descriptiveness can be assessed only by reference to the relevant public’s perception of that sign and to the goods or services concerned (see LOKTHREAD, paragraph 18 above, paragraph 32 and the case-law cited).
24 In the present case, the goods concerned are X-ray apparatus for dental purposes.
25 As regards the public by reference to whom the absolute ground for refusal in question must be assessed, the applicant did not contest the Board of Appeal’s assessment that that public consisted of a specialist public, namely a specialist public consisting of dentists, including orthodontists.
26 Moreover, given that the sign in question consists of elements from the English language, the Court shares the view of the Board of Appeal that the public by reference to whom the existence of an absolute ground for refusal must be assessed is an English‑speaking public. In that regard, it must be borne in mind that Article 7(2) of Regulation No 207/2009 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. The Court also shares the position of the Board of Appeal that nowadays, medical fields such as dentistry are internationally influenced, and therefore it may be assumed that the relevant specialist consumers in other Member States may also have sufficient knowledge of English to understand the meaning of the mark applied for.
27 Accordingly, it must be considered whether, from the viewpoint of that public, there is a sufficiently direct and specific relationship between the sign 3D eXam and the goods in respect of which registration has been sought.
28 The sign applied for consists of two connected elements, namely the element ‘3d’ and the word element ‘exam’.
29 Thus, the element ‘3d’ designates a three‑dimensional effect and the element ‘exam’ refers to a detailed inspection. The applicant’s argument that the public will understand the term ‘exam’ as a ‘test of a student’s knowledge or skill in a particular subject which results in a qualification if the student is successful’ cannot succeed.
30 It is true that the term ‘exam’ has a number of meanings. However, the Court shares the Board of Appeal’s view that that term is also the common abbreviation of the word ‘examination’ which, in the field of medicine, denotes a ‘physical inspection of a patient or parts of his body, in order to verify health or diagnose disease’ or a ‘laboratory study of secretory or excretory products, tissue samples etc., especially in order to diagnose disease’.
31 Since the goods covered by the mark applied for are ‘X-ray apparatus for dental purposes’, it is clear that dentists confronted with such apparatus identified by the sign 3D eXam will assign to the word element ‘exam’ the meaning that it has in a medical context.
32 The applicant’s argument that several mental steps are required in order to grasp the message that ‘3D eXam’ refers to a three‑dimensional dental X-ray examination is not convincing. In that regard, it is sufficient to note that the descriptive nature of the sign applied for must be assessed in relation to specific goods rather than in the abstract.
33 Nor does the applicant’s argument that the sign applied for contains the capital letter ‘X’ affect the Board of Appeal’s conclusion. The Board of Appeal was right to observe that the capital letter ‘X’ only reinforces the descriptive nature of the sign by denoting the fact that the 3D examination is carried out through X‑rays.
34 Moreover, the Court would point out that the application for registration in the present case relates to a word mark and that the letter ‘x’ has not been claimed to be a graphic feature within the meaning of Rule 3(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995, as amended, implementing Regulation No 40/94.
35 In addition, the Court shares the view of the Board of Appeal that the capital letter ‘X’ has no impact on the way in which the sign in question is pronounced.
36 Accordingly, the Board of Appeal was right to find that the mark in question, used with the goods concerned, will be directly understood by the relevant public as a description of those goods, and that Article 7(1)(c) of Regulation No 207/2009 therefore precludes registration of such a sign.
37 It follows from all the foregoing that the first plea must be rejected.
Second plea: infringement of Article 7(1)(b) of Regulation No 207/2009
38 By the second plea, the applicant submits, in essence, that the sign 3D eXam is distinctive.
39 It should be noted in this respect that there is a measure of overlap between the scope of Article 7(1)(b) of Regulation No 207/2009 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(c) being distinguished from Article 7(1)(b) in that it covers only a particular circumstance in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR II‑0000, paragraph 47). Accordingly, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) of the regulation (see judgment of 11 February 2010 in Case T‑289/08 Deutsche BKK v OHIM (Deutsche BKK), not published in the ECR, paragraph 53 and the case-law cited; see, by analogy, Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 86; and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 19).
40 Moreover, the applicant has failed to put forward any additional argument specific to the lack of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
41 Consequently, the second plea must be rejected.
Third plea: failure to take into account prior national registrations or grants of protection
42 The applicant claims that the Board of Appeal failed to have regard to national decisions obtained in Germany, Japan and the USA regarding the registration of its sign.
43 As is apparent from paragraph 36 above, Article 7(1)(c) of Regulation No 207/2009 precludes registration of the mark applied for.
44 It is sufficient to recall in that regard, as the Board of Appeal stated, that the Community trade mark regime is an autonomous legal system with its own objectives which are peculiar to it; it applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47; see, to that effect, judgment of 21 January 2009 in Case T‑399/06 giropay v OHIM (GIROPAY), not published in the ECR, paragraph 46). Accordingly, the registrability or protectability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone. Consequently, neither OHIM nor, as the case may be, the Courts of the European Union are bound by decisions adopted in a Member State, or a third country, finding a sign to be registrable as a national trade mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated (see, to that effect, Case T‑471/07 Wella v OHIM (TAME IT) [2009] ECR II‑377, paragraph 35).
45 In the light of the foregoing, this plea must be rejected and, in consequence, the action must be dismissed in their entirety.
Costs
46 Under Article 87(2) of the Rules of Procedure of the 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 (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Kaltenbach & Voigt GmbH to pay the costs.
Kanninen | Wahl | Soldevila Fragoso |
Delivered in open court in Luxembourg on 29 March 2012.
[Signatures]