JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
11 April 2013 (*)
(Community trade mark – International registration designating the European Community – Community word mark CARBON GREEN – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑294/10,
CBp Carbon Industries, Inc., established in Tortola, British Virgin Islands (United Kingdom), represented by S. Malynicz, Barrister, and J. Fish, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
ACTION against the decision of the First Board of Appeal of OHIM of 21 April 2010 (Case R 1361/2009-1), concerning an application for registration of the word sign CARBON GREEN as a Community trade mark,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President, V. Vadapalas and K. O’Higgins (Rapporteur), Judges,
Registrar: C. Heeren, Administrator,
having regard to the application lodged at the Registry of the General Court on 30 June 2010,
having regard to the response of OHIM lodged at the Court Registry on 15 November 2010,
further to the hearing on 21 February 2013,
gives the following
Judgment
Background to the dispute
1 On 5 May 2008, the applicant, CBp Carbon Industries, Inc., obtained an international registration designating the European Community in respect of the word sign CARBON GREEN. That registration was received at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 11 September 2008.
2 The goods in respect of which registration was sought are in Class 17 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Reclaimed rubber, namely recycled carbonaceous materials, namely, plastic, elastomeric, or rubber filled materials obtained from pyrolized tyre char and plastic, elastomeric, or rubber compounds formulated using such filler material’.
3 By letter of 25 September 2008, the examiner notified the applicant of an ex officio provisional refusal to protect the international registration. According to the examiner, the sign CARBON GREEN conveys clear and obvious information to the consumer concerning the characteristics of the goods covered so that the sign at issue falls within the scope of Article 7(1)(c) and (2) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p.1) (now Article 7(1)(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)). The examiner also found that the impact of the mark on the relevant public is primarily descriptive, with the result that its trade origin may not be perceived by the public. The examiner therefore concluded that the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009).
4 By letter of 25 November 2008, the applicant submitted its observations on the examiner’s objections and challenged those objections.
5 By decision of 14 September 2009, the examiner refused registration of the mark applied for pursuant to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
6 On 12 November 2009, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.
7 By decision of 21 April 2010 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal as unfounded. In particular, it found that, in the light of the technical nature of the goods concerned, the relevant public consists of specialised English-speaking consumers. It found that the individual words ‘carbon’ and ‘green’ as well as the sign CARBON GREEN as a whole are descriptive of the goods in question, that is to say goods manufactured from carbon obtained in an environmentally friendly manner. The order of the words is irrelevant in that regard. According to the Board of Appeal, the sign at issue is made up of standard words which are not capable of indicating the trade origin of the mark to the relevant public, with the result that the mark applied for is devoid of distinctive character in respect of the goods concerned.
Forms of order sought
8 The applicant claims that the Court should:
– annul the decision contested;
– order OHIM to pay the costs.
9 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
10 In support of its action, the applicant relies, in essence, on two pleas in law, alleging (i) infringement of Article 7(1)(c) of Regulation No 207/2009 and (ii) infringement of Article 7(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
11 The first plea in law is divided, in essence, into three parts, alleging: (i) error of assessment with regard to the meaning and syntax of the mark and its clear descriptive character with regard to the goods in question; (ii) the absence of evidence establishing the descriptive character of the mark; and (iii) error of assessment with regard to the case-law on the public interest.
Preliminary observations
12 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 ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
13 Article 7(1)(c) of Regulation No 207/2009 reflects the general interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (the judgment of 6 March 2007 in Case T‑230/05 Golf USA v OHIM (GOLF USA), not published in the ECR, paragraph 26, and the judgment of 15 November 2012 in Case T‑278/09 Verband Deutscher Prädikatsweingüter v OHIM (GG), not published in the ECR, paragraph 33).
14 The signs covered by Article 7(1)(c) of Regulation No 207/2009 are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the trade origin of goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case T‑348/02 Quick v OHIM (Quick) [2003] ECR II‑5071, paragraph 28; GG, paragraph 13 above, paragraph 34, see also, to that effect, Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 30).
15 Moreover, the signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 24; the judgement of 9 June 2010 in Case T‑315/09 Hoelzer v OHIM (SAFELOAD), not published in the ECR, paragraph 15; and GG, paragraph 13 above, paragraph 35).
16 It follows that, 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 to perceive immediately, without further thought, a description of the goods or services in question or of one of their characteristics (PAPERLAB, paragraph 15 above, paragraph 25, and GG, paragraph 13 above, paragraph 36).
17 As regards trade marks composed of words, such as the mark at issue in the present proceedings, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the terms of a sign submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on that sign enabling it to be registered as a trade mark (Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 40, and the judgment of 23 October 2008 in Case T‑133/06 TIM and TTV v OHIM – Past Perfect (PAST PERFECT), not published in the ECR, paragraph 30).
18 It should also be noted that the distinctiveness of a sign may only be assessed, first, in relation to the perception of the mark by the relevant section of the public and, second, in relation to the goods or services concerned (Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II‑683, paragraph 38, and the judgment of 2 May 2012 in Case T‑435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 19).
19 It must be noted that the applicant agrees with the finding made by the Board of Appeal in paragraph 15 of the contested decision that the target public comprises specialised English-speaking consumers familiar with the relevant industrial and engineering context.
The first part of the plea in law
20 According to the applicant, the Board of Appeal failed to assess the relationship between the word ‘carbon’ and the goods covered by the application. The element ‘carbon’ is so widespread that it should be considered dominant and not descriptive, even for the specialised public in question. The applicant claims that the significance of the words ‘carbon’ and ‘green’ lies in their relationship with each other. The combination of the word ‘carbon’, which is normally associated with air pollution, with the word ‘green’, which brings ecology to mind, is contradictory and has no clear meaning. The sign does not therefore describe the goods in question. The Board of Appeal also erred by failing to take into account the unusual grammatical structure and the elliptical nature of the sign, which preclude an intuitive understanding of the sign.
21 OHIM disputes the applicant’s arguments.
22 Contrary to what the applicant claims, the Board of Appeal assessed the relationship between the word ‘carbon’ and the goods at issue by maintaining, in paragraph 21 of the contested decision, that that word on its own has a sufficiently immediate and direct link with those goods.
23 Moreover, although it is true, as the applicant claims, that carbon is a widespread chemical element present in different forms in numerous goods, the fact nevertheless remains that in the present case it constitutes an essential characteristic of the goods in question. Indeed, the actual description of the goods states specifically that the goods consist of ‘carbonaceous materials’ or ‘materials obtained from … char’. Furthermore, a specialised public familiar with the relevant industrial and engineering context such as that in the present case is able to identify the goods in which the presence of carbon – to a greater or lesser degree – denotes a particular characteristic. Therefore, as OHIM correctly points out, that relevant public will perceive the word ‘carbon’ as providing information on the composition of the goods.
24 Accordingly, the Board of Appeal was correct to consider, at paragraph 21 of the contested decision, that the word ‘carbon’ must be considered, from the point of view of the relevant public, as descriptive of a characteristic of the goods concerned.
25 As for the word ‘green’, the parties agree on the fact that in the present case, it denotes ecological benefits. However, it is apparent from the actual description of the goods concerned, which refers to ‘reclaimed’ and ‘recycled’ goods, that a feature of the goods is that they contribute to maintaining ecological balance. In that context, the word ‘green’ has a direct and specific relationship with the goods concerned, and enables the relevant public to perceive immediately, without further thought, a description of a characteristic of those goods.
26 Therefore, the Board of Appeal was right to find, in paragraph 23 of the contested decision, that the word ‘green’ must be considered, from the point of view of the relevant public, as descriptive of a characteristic of the goods concerned.
27 As regards the applicant’s argument relating to the alleged contradiction produced by the combination of the two words which comprise the sign, it does not, in itself, amount to a denial of the descriptive character of that sign. In that regard, although the combination of the words ‘carbon’ and ‘green’ may appear paradoxical, it corresponds precisely to the description of the characteristics of the goods which, although composed of a chemical element associated with detrimental effects on the environment, are developed from reclaimed and recycled materials. The contradiction alluded to by the applicant simply shows the direct and specific relationship between the sign applied for and the goods concerned.
28 The relevant public, as a result of its specialisation and knowledge of the industrial and engineering context of the goods at issue, will associate the sign at issue with the characteristics of those goods. Although used in a technical and industrial context, the word ‘carbon’, in the same way as the adjective ‘green’, is part of everyday language. It is apparent from the applicant’s written pleadings that those two words are used in their ordinary and dominant meaning.
29 Accordingly, it must be found that, like the words ‘carbon’ and ‘green’, the sign CARBON GREEN has a sufficiently direct and specific relationship with the goods at issue and enables the relevant public immediately to perceive, without further thought, a description of those goods and their characteristics.
30 As regards the alleged unusual and extremely elliptical nature of the grammatical structure of the sign applied for, the applicant has not put forward any evidence capable of showing in what way that structure is elliptical or distinguishable from the usual methods of designating goods or their essential characteristics.
31 In that regard, it must be noted that the applicant has claimed that the significance of the words ‘carbon’ and ‘green’ lies in their relationship with each other, but it has not stated that that claim is valid only if the words appear in a particular order. Since, as is apparent from paragraphs 24 and 26 above, each of the words which comprise the sign is, from the point of view of the relevant public, descriptive of the goods concerned, it must be concluded that the order of those words has no bearing on the intuitive understanding of the relationship between the sign and those goods.
32 Since there is a direct and specific relationship between the meaning of the sign and the characteristics of the goods concerned, a specialised public, a fortiori an English-speaking public such as that in the present case, will perceive the sign CARBON GREEN intuitively as an indication of the characteristics of those goods.
33 The applicant relies on the case which gave rise to the judgment in Procter & Gamble v OHIM, paragraph 17 above, from which it is apparent that an unusual syntactical juxtaposition may prevent intuitive understanding of a sign. Further, it is apparent from the case-law that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. Although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must consider with particular care whether it should decide in the same way or not, the application of those principles must none the less be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 24 April 2012 in Case T‑328/11 Leifheit v OHIM (EcoPerfect), not published in the ECR, paragraph 61).
34 The mere fact that in this case, unlike the case relied on, the relevant public is composed of specialised consumers and the goods concerned are not everyday consumer goods justifies, in accordance with the case-law referred to in paragraph 18 above, a different assessment.
35 It follows from the foregoing that the Board of Appeal did not err in its assessment of the meaning of the syntax of the mark and the descriptive character of the goods at issue.
36 The first part of the first plea must therefore be rejected.
The second part of the plea in law
37 The applicant claims that the Board of Appeal did not base its assessment of the descriptive character of the mark applied for on any evidence. By proceeding in that manner, the Board of Appeal implicitly assumed that the descriptive character of that mark is well known. Having regard to the judgment in Case T‑260/03 Celltech v OHIM (CELLTECH) [2005] ECR II‑1215, and the judgment in Case C‑273/05 P OHIM v Celltech [2007] ECR I‑2883, the Board of Appeal should have adduced evidence of the specific and technical meaning that it attributed to the mark CARBON GREEN.
38 OHIM disputes the applicant’s arguments.
39 In that regard, suffice it to note that the registrability of a sign as a Community trade mark must be assessed only on the basis of the relevant European Union legislation, as interpreted by the EU judicature. Therefore it is sufficient that the Board of Appeal applied the descriptiveness test, as interpreted by the case-law, in order to reach a decision and it was not obliged to justify its action by the production of evidence (Case T‑289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II‑2851, paragraph 54).
40 It is clear, in the present case, that the Board of Appeal applied the descriptiveness test and the case-law relating thereto to reach the conclusion that the sign CARBON GREEN has a direct and specific relationship with the goods concerned without any evidence being necessary for this purpose. Unlike the present case, in CELLTECH and OHIM v Celltech, paragraph 37 above, relied on by the applicant, the Board of Appeal did not succeed in showing that the sign at issue had such a relationship.
41 The second part of the first plea must therefore be rejected.
The third part of the plea in law
42 The applicant states that the Board of Appeal was indeed obliged, pursuant to Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, to take account of the public interest that descriptive signs may be freely used by all. However, in that context, the Board of Appeal should have analysed the sector in question so as to establish the likelihood of other traders wanting to use the sign CARBON GREEN in the future. The applicant submits that such an analysis would have ruled out that likelihood.
43 OHIM disputes the applicant’s arguments.
44 In that regard, it is true that, according to settled case-law, in the context of the application of Article 7(1)(c) of Regulation No 207/2009, it must be determined whether a descriptive sign is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future (Joined Cases T‑357/99 and T‑358/99 Telefon & Buch v OHIM (UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS) [2001] ECR II‑1705, paragraph 29, and Case T‑189/07 Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE) [2009] ECR II‑1503, paragraph 28). Contrary to what the applicant maintains, there is no requirement that that assessment should include an analysis of the sector in question.
45 In the light of the findings made in the context of the first part of the first plea, it is quite reasonable to envisage that the sign CARBON GREEN may, in future, be associated in the mind of the relevant class of persons with similar goods. Indeed, the direct and specific relationship with the goods concerned has been established (see paragraph 29 above), so that the relevant public may immediately perceive, without further thought, a description of the characteristics of those goods. That is supported by the fact that consumers and manufacturers are increasingly mindful of the ecological quality of goods and of environmentally-friendly manufacturing processes (EcoPerfect, paragraph 33 above, paragraph 45), in particular in industry.
46 Moreover, whether the number of competitors who may have an interest in using the signs or indications of which the mark consists is large or small is not decisive. Any operator at present offering, as well as any operator who might in the future offer, goods or services which compete with those covered by the mark in respect of which registration is sought must be able freely to use the signs or indications which may serve to describe characteristics of its goods or services (see, by analogy, Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 58).
47 Accordingly, the Board of Appeal did not err in its assessment of the case-law relating to the public interest.
48 Therefore, the third part of the first plea must be rejected.
49 Having regard to the foregoing, the Board of Appeal was right to find, in paragraph 26 of the contested decision, that the mark applied for is descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009, of the goods concerned by the application for registration.
50 The first plea must therefore be rejected in its entirety.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
51 It is settled case-law that a word mark which is descriptive of the 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 (Koninklijke KPN Nederland, paragraph 46 above, paragraph 86). Since it was found, in paragraph 49 above, that the sign CARBON GREEN is descriptive of the goods concerned, there is no need to examine the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
52 The second plea must therefore be rejected.
53 Consequently, the action must be dismissed in its entirety.
Costs
54 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.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders CBp Carbon Industries, Inc. to pay the costs.
Papasavvas | Vadapalas | O’Higgins |
Delivered in open court in Luxembourg on 11 April 2013.
[Signatures]