JUDGMENT OF THE GENERAL COURT (Second Chamber)
15 July 2015 (*)
(Community trade mark — Invalidity proceedings — International registration designating the European Community — Figurative mark HOT — Absolute grounds for refusal — No descriptive character — Distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Second sentence of Article 75 of Regulation No 207/2009 — Cross-claim before the Board of Appeal — Article 8(3) of Regulation (EC) No 216/96 — Cross-claim before the General Court — Article 134(3) of the Rules of Procedure of 2 May 1991)
In Case T‑611/13,
Australian Gold LLC, established in Indianapolis, Indiana (United States), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Poch and S. Hanne, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Effect Management & Holding GmbH, established in Vöcklabruck (Austria), represented by H. Pernez, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 September 2013 (Case R 1881/2012-4) concerning invalidity proceedings between Australian Gold LLC and Effect Management & Holding GmbH,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 21 November 2013,
having regard to the response of OHIM lodged at the Court Registry on 15 July 2014,
having regard to the response of the intervener lodged at the Court Registry on 21 July 2014,
further to the hearing on 27 February 2015,
gives the following
Judgment
Background to the dispute
1 The intervener, Effect Management & Holding GmbH, is the proprietor of the international registration designating the European Community, granted by the World Intellectual Property Organization (WIPO) on 13 August 2009, for the following figurative sign:
2 The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of that registration on 12 November 2009 and, by decision of 26 November 2010, allowed its protection within the territory of the European Union for goods in Classes 3 and 5 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:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, massage oils, gels, face creams’;
– Class 5: ‘Hygienic products for medicine; nutritional supplements (adapted for medical use); lubricants for pharmaceutical purposes’.
3 On 6 April 2011, the applicant, Australian Gold LLC, applied for a declaration of invalidity in respect of the contested mark 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).
4 By decision of 10 August 2012, the Cancellation Division of OHIM partially granted that application and declared the invalidity of the contested mark for ‘bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, massage oils, gels, face creams’ in Class 3 and for ‘nutritional supplements (adapted for medical use); lubricants for pharmaceutical purposes’ in Class 5.
5 On 10 October 2012, the intervener filed a notice of appeal at OHIM against the decision of the Cancellation Division in so far as it had granted the application for a declaration of invalidity. In its response, lodged on 20 February 2013, the applicant brought a cross-claim against the decision of the Cancellation Division in so far as that decision was unfavourable to it.
6 By decision of 10 September 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM partially annulled the decision of the Cancellation Division in so far as it had declared the invalidity of the contested mark for ‘bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ and for ‘nutritional supplements (adapted for medical use)’. It took the view that the word element ‘hot’ in that mark was not descriptive and was distinctive for the goods in question (paragraphs 13 to 42 of the contested decision). Having confirmed the assessments made by the Cancellation Division concerning ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’, it also altered that decision by declaring the invalidity of the mark solely for the goods ‘massage oils, gels’ in Class 3 and ‘lubricants for pharmaceutical purposes’ in Class 5 (paragraph 47 of the contested decision). In addition, it held that the observations submitted by the applicant in response to the appeal filed by the intervener, which contained the abovementioned cross-claim, had been made out of time and did not examine them (paragraphs 44 to 46 of the contested decision).
Forms of order sought
7 The applicant claims, in essence, that the Court should:
– annul the contested decision in so far as it annulled the decision of the Cancellation Division and did not examine the merits of its cross-claim;
– dismiss the appeal filed by the intervener against the decision of the Cancellation Division;
– order OHIM and the intervener to pay the costs, including the costs incurred before the Board of Appeal.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
9 The intervener claims, in essence, that the Court should:
– confirm the contested decision in so far as it annulled the decision of the Cancellation Division;
– alter the contested decision in so far as it declared the invalidity of the contested mark for ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’;
– confirm the decision of the Cancellation Division in so far as it rejected the application for a declaration of invalidity for ‘cleaning, polishing, scouring and abrasive preparations’ and ‘hygienic products for medicine’;
– order the applicant to pay the costs.
10 As the intervener confirmed at the hearing in its response to a question asked by the Court, which was recorded in the minutes of the hearing, its first and third heads of claim seek the dismissal of the action brought by the applicant.
Law
11 In support of its action, the applicant essentially raises three pleas in law alleging, first, the violation of its right to be heard under the second sentence of Article 75 of Regulation No 207/2009, second, an infringement of Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), as amended, and, third, an infringement of Article 7(1)(b) and (c) of Regulation No 207/2009.
12 The intervener, in claiming that the Court should alter the contested decision, availed itself of the possibility conferred on it by Article 134(3) of the Rules of Procedure of the General Court of 2 May 1991 to seek, in its response, an order annulling or altering the decision of the Board of Appeal on a point not raised in the application. The applicant and OHIM did not avail themselves of the possibility available to them under Article 135(3) of the Rules of Procedure of 2 May 1991 to submit a pleading confined to responding to the form of order sought for the first time in the response of the intervener and took a position on the intervener’s claim at the hearing in accordance with the audi alteram partem principle. In accordance with that principle, the intervener also had the opportunity at the hearing to present its arguments in response to the claims made by the applicant and by OHIM.
13 In support of its claim under Article 134(3) of the Rules of Procedure of 2 May 1991, the intervener relies on a single plea in law alleging an infringement of Article 7(1)(b) and (c) of Regulation No 207/2009. The arguments put forward in support of that plea in law will be examined together with the arguments raised by the applicant in support of its third plea in law.
The plea in law, alleging an infringement of the second sentence of Article 75 of Regulation No 207/2009 raised by the applicant
14 The applicant claims that the Board of Appeal wrongly rejected as out of time its observations submitted in response to the appeal filed by the intervener with the Board of Appeal. In so far as those observations contained arguments challenging the appeal filed with the Board of Appeal and a decision of the Bundespatentgericht (Federal Patent Court, Germany) in support of those arguments, the Board of Appeal infringed the second sentence of Article 75 of Regulation No 207/2009 by ruling on the appeal without taking those arguments and that evidence into account.
15 As OHIM recognises in its response, the Board of Appeal should be considered to have wrongly held that the applicant’s observations had been lodged out of time.
16 On 20 December 2012, the applicant received the letter from OHIM communicating to it the appeal filed by the intervener with the Board of Appeal. In that letter, OHIM informed it that it had a period of two months to submit its observations on that appeal. Thus, in accordance with the combined provisions of Rule 65(1) and Rule 70(2) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, that period of two months expired on 20 February 2013, and not on 19 February 2013, as the Board of Appeal held in the contested decision (paragraph 45). Since the applicant’s observations had been lodged on 20 February 2013, the Board of Appeal could not reject them as out of time. It therefore ruled on the appeal filed by the intervener without taking the applicant’s observations into account, thereby infringing the second sentence of Article 75 of Regulation No 207/2009.
17 OHIM claims, however, that that error had no bearing on the case on the ground that the Board of Appeal would not have accepted the applicant’s arguments if it had examined their substance.
18 It is indeed apparent from the case-law concerning the second sentence of Article 75 of Regulation No 207/2009 that non-compliance with that provision, whose purpose is to protect the rights of the defence, by providing that decisions of OHIM ‘shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments’, can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if it had been observed (see judgment of 12 May 2009 in Jurado Hermanos v OHIM (JURADO), T‑410/07, ECR, EU:T:2009:153, paragraph 32 and cited case-law).
19 In the present case it is not shown that the Board of Appeal could have decided on a different outcome if it had taken into account the arguments and the evidence contained in the applicant’s observations in response to the appeal filed with it.
20 First of all, in its observations the applicant simply referred to arguments made before the Cancellation Division and reproduced certain passages of the decision of the Cancellation Division. Thus, because the Board of Appeal is required to base its decision on all the matters of fact and of law which the parties put forward in the proceedings before the department which heard the application at first instance (see, to that effect, judgment of 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, ECR, EU:T:2006:197, paragraphs 56 to 58 and cited case-law), the Board of Appeal cannot be considered to have failed to take into account an argument raised by the applicant in its observations which could have led it to decide on a different outcome.
21 Second, according to settled case-law, OHIM is not bound, even if it may take them into consideration, by decisions adopted in a Member State (see judgment of 21 March 2013 in Event v OHIM — CBT Comunicación Multimedia (eventer EVENT MANAGEMENT SYSTEMS), T‑353/11, EU:T:2013:147, paragraph 58 and cited case-law). The Board of Appeal was therefore able to hold, without error, in paragraph 42 of the contested decision, that it was not required to take into account decisions of national administrative and judicial authorities (see paragraphs 60 to 65 below). Consequently, the view cannot be taken that the finding by the Board of Appeal of the admissibility of the decision of the Bundespatentgericht annexed to the applicant’s observations and of the extracts of that decision reproduced in those observations could have led it to decide on a different outcome in the circumstances of the present case (see, to that effect, judgment of 27 September 2012 in Tuzzi fashion v OHIM — El Corte Inglés (Emidio Tucci), T‑535/08, EU:T:2012:495, paragraph 91).
22 The plea in law alleging an infringement of the second sentence of Article 75 of Regulation No 207/2009 must therefore be dismissed.
The plea in law alleging an infringement of Article 8(3) of Regulation No 216/96 raised by the applicant
23 The applicant claims that the wrongful rejection, as out of time, of its observations submitted in response to the appeal filed by the intervener with the Board of Appeal also infringed Article 8(3) of Regulation No 216/96 because those observations contained a cross-claim seeking the partial annulment of the decision of the Cancellation Division which was not examined by the Board of Appeal.
24 It should be recalled in this regard that the Board of Appeal wrongly rejected the applicant’s observations as out of time (see paragraphs 15 and 16 above).
25 Furthermore, under Article 8(3) of Regulation No 216/96, ‘[i]n inter partes proceedings, the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal’.
26 The Board of Appeal therefore infringed Article 8(3) of Regulation No 216/96 by failing to examine the claim seeking the partial annulment of the decision of the Cancellation Division which was contained in the applicant’s observations. The plea in law alleging an infringement of that provision must therefore be upheld.
The pleas in law alleging an infringement of Article 7(1)(b) and (c) of Regulation No 207/2009 raised by the applicant and the intervener
27 In the contested decision the Board of Appeal analysed the different meanings of the word ‘hot’ in relation to ‘bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ and ‘nutritional supplements (adapted for medical use)’, in particular high temperature, spicy taste and exciting character, and concluded that the contested mark was devoid of descriptive character in respect of those goods (paragraphs 15 to 34 of the contested decision). On the other hand, it held that in so far as ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’ were hot-applied or produced a heating effect, the mark was descriptive in respect of them (paragraph 17 of the contested decision). It also considered that, except for goods for which it had descriptive character, namely ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’, the mark had distinctive character for the other goods because, despite its vague positive connotation, the conciseness of the sign would prevent the consumer from confusing it with an advertising slogan (paragraphs 36 to 41 of the contested decision). Lastly, it recalled the non-binding character of decisions of national authorities also given on the same mark (paragraphs 10 and 42 of the contested decision).
28 The applicant and the intervener do not dispute that consideration was not given to the rectangular frame around the word ‘hot’ as the graphic representation of that word and thus that the descriptive and distinctive character of the contested mark was analysed solely on the basis of the word ‘hot’ (paragraph 13 of the contested decision). Nor do they dispute the fact that that analysis had to be conducted with reference to the list of goods as described in French, which is the language of the international registration (paragraph 10 of the contested decision).
29 On the other hand, the applicant and the intervener, in support of its cross-claim, dispute the Board of Appeal’s assessments, which are unfavourable to them, in relation to the descriptive and distinctive character of the contested mark. The applicant also criticises the failure to take into account decisions of national authorities relating to that same mark.
The complaints relating to the descriptive character of the contested mark
30 The applicant considers, contrary to the view taken by the Board of Appeal, that it follows from the principles applicable to the examination of the descriptive character of marks that a mark composed of the word ‘hot’ is descriptive of all ‘bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ and ‘nutritional supplements (adapted for medical use)’. The word ‘hot’, as an indication of the temperature of those goods or of their temperature of use, is an indication which may be used for all the goods in question. According to the applicant, the other meanings of ‘hot’, in particular ‘fashionable’, ‘attractive’ and ‘sexy’, also constitute other possible uses of that word for the goods concerned.
31 The intervener contests the Board of Appeal’s assessment of the descriptive character of the contested mark in respect of ‘massage oils, gels’ (Class 3) and ‘lubricants for pharmaceutical purposes’ (Class 5). It claims that if lubricants for pharmaceutical purposes produced burning sensations or a heating effect they would stray from their purpose, that gels producing heating effects fall within Class 5 and not Class 3 and, lastly, that the sensation of heat in massages comes from the rubbing of hands and not from massage oil.
32 It should be noted in this regard 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.
33 According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents signs and indications referred to in that article from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31; 27 February 2002 in Ellos v OHIM (ELLOS), T‑219/00, ECR, EU:T:2002:44, paragraph 27, and 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 14).
34 In addition, signs and indications which may serve in trade to designate the characteristics of the goods or services 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 them 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 (judgments in OHIM v Wrigley, cited in paragraph 33 above, EU:C:2003:579, paragraph 30, and UniversalPHOLED, cited in paragraph 33 above, EU:T:2012:210, paragraph 15).
35 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment in UniversalPHOLED, cited in paragraph 33 above, EU:T:2012:210, paragraph 16 and cited case-law).
36 Lastly, it is important to bear in mind that the distinctiveness of a mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (see judgment of 7 June 2005 in Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancial Services), T‑316/03, ECR, EU:T:2005:201, paragraph 26 and cited case-law).
37 In this case, the Board of Appeal considered that the relevant public for the purposes of the perception of the descriptive character of the sign applied for was English-speaking consumers (paragraph 14 of the contested decision). That definition of the relevant public, which is not disputed by the applicant and the intervener, must be confirmed.
– The absence of descriptive character of the contested mark for ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’ claimed by the intervener
38 The arguments put forward by the intervener in support of the absence of descriptive character of the contested mark for ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’ must be rejected.
39 It is true that, as the intervener rightly claims, in so far as the word ‘hot’ refers to a high temperature, it does not designate the thermal conditions of use of those goods. Those goods can be used at high temperatures and at low temperatures, as was essentially recognised, moreover, by the Board of Appeal when it stated in the contested decision that ‘those goods can be spread, even at high temperature’. The Board of Appeal therefore wrongly held in paragraph 17 of the contested decision that ‘hot’ described, in accordance with Article 7(1)(c) of Regulation No 207/2009, the fact that those goods were spread while hot.
40 On the other hand, as the Board of Appeal states and contrary to the claim made by the intervener, the word ‘hot’ must be considered to designate the effects caused by ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’. Those goods, whether or not they are adapted for medical use, are all intended to be spread over the skin by more or less repetitive movements creating a sensation of heat. In this regard the fact adduced by the intervener that such heating is caused by the rubbing of hands on the skin and not by the goods as such is immaterial, since rubbing necessarily occurs when the goods are applied.
41 The Board of Appeal was therefore right to hold in the contested decision that the contested mark was descriptive of ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’.
– The contradictory character of the contested decision claimed by the applicant
42 The applicant claims that the Board of Appeal could not, without contradicting itself, recognise the descriptive character of the contested mark for ‘massage oils, gels’ and rule it out for ‘perfumes, essential oils, cosmetics’.
43 This complaint, which alleges, in essence, that the Board of Appeal failed to draw the necessary inferences from the finding of the descriptive character of the contested mark in respect of ‘massage oils, gels’ for the assessment of its descriptive character for ‘perfumes, essential oils, cosmetics’, must be upheld.
44 According to settled case-law, the finding of the descriptive character of a mark applies not only to goods for which it is directly descriptive, but also to the more general category to which those goods belong in the absence of a suitable restriction of the trade mark by the applicant (judgments of 7 June 2001 in DKV v OHIM (EuroHealth), T‑359/99, ECR, EU:T:2001:151, paragraph 33, and 15 September 2009 in Wella v OHIM (TAME IT), T‑471/07, ECR, EU:T:2009:328, paragraph 18).
45 In the present case the view must be taken that the applicant was right to state, like OHIM in its response, that the ‘massage oils, gels’ were included in the more general categories ‘perfumes, essential oils, cosmetics’, as is shown by the word ‘including’ which joins them (see, by analogy, with regard to the words ‘in particular’, judgments of 8 June 2005 in Wilfer v OHIM (ROCKBASS), T‑315/03, ECR, EU:T:2005:211, paragraphs 3 and 64, and 12 November 2008 in Scil proteins v OHIM — Indena (affilene), T‑87/07, EU:T:2008:487, paragraphs 38 and 39).
46 It should be stated in this regard that, contrary to the claim made by the intervener, the word ‘including’ does not refer only to cosmetics. First, in the list of goods for which the protection of the contested mark was accepted, the goods ‘perfumes’, ‘essential oils’ and ‘cosmetics’ are separated by commas and separated from the other goods on the list by a semi-colon (see, to that effect, judgment of 15 May 2014 in Louis Vuitton Malletier v OHIM, C‑97/12 P, EU:C:2014:324, paragraphs 96 and 97). Second, there are direct and specific links between those three categories of goods; perfumes and essential oils can be classified as ‘cosmetics’ because cosmetic products are generally defined as being products intended to be placed in contact with the surface areas of the human body in order to care for them or beautify them.
47 For the same reasons as are outlined in paragraph 46 above, the argument put forward by OHIM for the first time at the hearing that ‘massage oils’ and ‘gels’ do not fall within the general categories ‘perfumes, essential oils, cosmetics’ must be rejected, without it being necessary to examine its admissibility. In particular, ‘massage oils’ and ‘gels’, which are mentioned without further clarification, may be considered to be intended to care for or beautify the body.
48 The Board of Appeal therefore erred by failing to draw the necessary inferences from the finding of the descriptive character of the contested mark in respect of ‘massage oils, gels’ for the assessment of its descriptive character for ‘perfumes, essential oils, cosmetics’ and the other categories of goods cited as an illustration of those general categories of goods. The Board of Appeal must therefore be considered to have wrongly ruled out the descriptive character of that mark for ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’, without it being necessary to examine the applicant’s other arguments relating to the descriptive character of that mark for those goods.
– The descriptive character of the contested mark for ‘bleaching preparations and other substances for laundry use; soaps’ and ‘nutritional supplements (adapted for medical use)’ claimed by the applicant
49 With regard, first, to the indication by the word ‘hot’ of a high temperature, the word ‘hot’ cannot, as the applicant claims, be considered to designate the high temperature of ‘bleaching preparations and other substances for laundry use; soaps’ and ‘nutritional supplements (adapted for medical use)’. Those goods, which relate to laundry care and to human health care and nutrition, do not, by their nature, have a high temperature. On the contrary, as OHIM rightly states, for some of them, such as soaps, such a temperature could even cause them to deteriorate.
50 The word ‘hot’ also does not designate the temperature of use of the goods concerned. Although some of those goods, such as ‘bleaching and laundry preparations’ and even ‘nutritional supplements’, can be used at a high temperature, that condition of use does not characterise those goods, which can be used just as well at low temperatures. Adaptation to low temperatures is even particularly important to consumers in the case of laundry, as the intervener rightly notes.
51 With regard, second, to other meanings of the word ‘hot’, the only argument put forward by the applicant in support of its claim relating to the descriptive character of the goods affected by the other meanings of the word ‘hot’, which are the terms ‘fashionable’, ‘attractive’ and ‘sexy’, must be rejected. The fact, which is in any case hypothetical, that the goods in question are sold in sex shops does not form part of the examination of the descriptive character of a sign as the place of sale is not specified in the list of goods for which registration of a sign is sought. According to settled case-law, absolute grounds for refusal of registration must be assessed by reference to the wording of the goods or services set forth in the application for registration (judgment of 22 June 2006 in Storck v OHIM, C‑24/05 P, ECR, EU:C:2006:421, paragraph 23). It should be added, in any event, that the positive connotation of the abovementioned meanings of the word ‘hot’ are more a matter of vague, indirect evocation than the direct, immediate designation of a quality or characteristic of the goods concerned (see, to that effect, judgment of 9 October 2002 in Dart Industries v OHIM (UltraPlus), T‑360/00, ECR, EU:T:2002:244, paragraphs 27 and 28).
52 The applicant’s arguments relating to the descriptive character of the contested mark must therefore be rejected in respect of ‘bleaching preparations and other substances for laundry use; soaps’ and ‘nutritional supplements (adapted for medical use)’.
The complaints relating to the distinctive character of the contested mark
53 The applicant claims that even if the word ‘hot’ is not descriptive of ‘bleaching preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ or ‘nutritional supplements (adapted for medical use)’, it merely constitutes a ‘catchy advertisement’ without any function as an indication of origin and is therefore devoid of distinctive character.
54 The intervener claims that the Board of Appeal was wrong to hold that the contested mark was not distinctive for ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’.
55 It should be noted, first, that Article 7(1) of Regulation No 207/2009 makes it quite clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (see judgment of 12 January 2005 in Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, ECR, EU:T:2005:3, paragraph 45 and cited case-law). As the Board of Appeal rightly held that the contested mark was descriptive for ‘massage oils, gels’ and for ‘lubricants for pharmaceutical purposes’ (see paragraph 41 above) and as it wrongly failed to infer from that descriptive character that the mark was also descriptive for ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ (see paragraph 48 above), the arguments raised by the applicant and the intervener as to whether or not that mark had distinctive character in respect of those goods must be rejected as irrelevant.
56 As all the arguments put forward by the intervener in support of its claim under Article 134(3) of the Rules of Procedure of 2 May 1991 must be rejected (see also paragraph 38 above), that claim must be dismissed.
57 It is necessary to note, second, with regard to the applicant’s argument concerning the goods for which the contested mark is not descriptive, namely ‘bleaching preparations and other substances for laundry use; soaps’ and ‘nutritional supplements (adapted for medical use)’, the settled case-law according to which the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character. The laudatory connotation of a mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers, as such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services (see judgment of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, ECR, EU:C:2012:460, paragraphs 29 and 30 and cited case-law).
58 Thus, the claim made by the applicant of the essentially promotional character of the word ‘hot’ is not sufficient in itself to call into question the finding by the Board of Appeal of the distinctive character of the contested mark. It is still necessary to establish that that word exclusively constitutes a promotional formula. The applicant has itself acknowledged, in particular in connection with its arguments relating to the descriptive character of the contested mark, that the word ‘hot’ has several meanings, such as ‘warm’ or ‘spicy’, which do not have promotional character. Thus, the applicant has not established that word ‘hot’, like the other words cited by it in support of its argument (such as the words ‘super’ or ‘best’), exclusively constituted an advertising slogan precluding recognition of its distinctive character (see, to that effect, judgment of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 47).
The complaint alleging the failure to take into account decisions of national administrative and judicial authorities
59 The applicant alleges that the Board of Appeal failed to take into account decisions of national administrative and judicial authorities, in particular the decisions of the Bundespatentgericht of 9 October 2012 and of the Bundesgerichtshof (Federal Court of Justice, Germany) of 19 February 2014 refusing to grant protection to the contested mark.
60 According to settled case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant legislation alone. Therefore, neither OHIM nor, as the case may be, the EU Courts are bound — even if they may take them into consideration — by decisions adopted in a Member State, even in a situation where the decisions were adopted under national legislation harmonised with Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) (see the case-law cited in paragraph 21 above). It is appropriate to add that there is no provision in Regulation No 207/2009 requiring OHIM or, on appeal, the General Court, to come to the same conclusions as those arrived at by national administrative or judicial authorities in similar circumstances (see judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 49 and cited case-law).
61 According to recital 6 in the preamble to Regulation No 207/2009, the Community law relating to trade marks does not replace the laws of the Member States on trade marks. Therefore it is possible that, because of linguistic, cultural, social and economic differences, a trade mark which is not protected in one Member State is protected in another Member State or at EU level (see, to that effect, judgment of 25 October 2007 in Develey v OHIM, C‑238/06 P, ECR, EU:C:2007:635, paragraphs 57 to 59 and cited case-law).
62 Contrary to the claim made by the applicant, the provisions of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2001 L 12, p. 1), as amended, and of Article 109 of Regulation No 207/2009 certainly do not invalidate that finding. As is clear, in particular, from recital 15 in the preamble to Regulation No 44/2001, cited by the applicant, that regulation seeks merely to ensure that irreconcilable judgments will not be given in two Member States and does not apply to OHIM. Furthermore, Article 109 of Regulation No 207/2009 seeks to prevent actions for infringement brought in national courts, one based on a Community trade mark and another on a national mark, giving rise to inconsistent decisions. As the intervener rightly states, it thus relates solely to the effects and not to the conditions governing protection of those marks.
63 Nor is the abovementioned finding called into question by Article 7(2) of Regulation No 207/2009, which provides that the absolute grounds for refusal set out in paragraph 1 apply notwithstanding that they obtain in only part of the Union. Refusal of a national registration is based on national provisions implemented on the basis of a national procedure in a national context (see paragraph 61 above) and is not therefore equivalent to a finding of the existence in a State of an absolute ground for refusal within the meaning of Regulation No 207/2009.
64 The judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 77), which is cited by the applicant, is also irrelevant in the present case because it concerns OHIM’s obligation to take into account its own decisions taken in respect of similar applications relating to Community trade marks.
65 Consequently, even though it is desirable for OHIM to take into account decisions of national authorities concerning marks identical to those on which it has to rule and vice-versa, OHIM is not required to take those decisions into account, including decisions concerning identical marks, and, assuming that it does take them into account, it is not bound by those decisions.
66 Thus, in this case, without it being necessary to rule on the admissibility of the decision of the Bundesgerichtshof communicated by letter subsequent to the application, which is disputed by OHIM, the applicant’s complaint alleging the failure by the Board of Appeal to take into account decisions of national administrative and judicial authorities relating to the contested mark must be rejected.
67 In view of the foregoing, the contested decision must be annulled in so far as the Board of Appeal failed to rule on the claim made by the applicant relating to ‘cleaning, polishing, scouring and abrasive preparations’ in Class 3 and ‘hygienic products for medicine’ in Class 5 (see paragraph 26 above) and in so far as it annulled and altered the decision of the Cancellation Division for ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ in Class 3 (see paragraph 48 above).
68 In addition, in altering the contested decision, it is necessary to dismiss the appeal filed by the intervener against the decision of the Cancellation Division in respect of ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ (see, to that effect, judgment of 29 January 2013 in Fon Wireless v OHIM — nfon (nfon), T‑283/11, EU:T:2013:41, paragraph 83), as is requested by the applicant by its second head of claim. The Court has the power to alter the contested decision on this point in that the Board of Appeal adopted a position on the descriptive character of the contested mark for the goods in question and in that, as is made clear in paragraphs 43 to 48 above, it wrongly held that the contested mark was not descriptive for ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ (see, to that effect, judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72).
69 The applicant’s action must be dismissed as to the remainder, as must the claim made by the intervener under Article 134(3) of the Rules of Procedure of 2 May 1991 (see paragraph 56 above).
Costs
70 Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.
71 In these circumstances, as each of the three parties has succeeded on some and failed on other heads and in the absence of special circumstances, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 10 September 2013 (Case R 1881/2012-4) in so far as it failed to rule on the claim made by Australian Gold LLC relating to ‘cleaning, polishing, scouring and abrasive preparations’ in Class 3 and ‘hygienic products for medicine’ in Class 5 and in so far as it annulled and altered the decision of the Cancellation Division for ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’ in Class 3;
2. Dismisses the appeal filed by Effect Management & Holding GmbH with the Board of Appeal in respect of ‘perfumes, essential oils, cosmetics, including shampoos, shower gels, body lotions, face creams’;
3. Dismisses the action as to the remainder;
4. Dismisses the claim seeking alteration made by Effect Management & Holding;
5. Orders each party to bear its own costs.
Martins Ribeiro Gervasoni Madise
Delivered in open court in Luxembourg on 15 July 2015.
[Signatures]