JUDGMENT OF THE COURT OF FIRST INSTANCE (Sixth Chamber)
9 December 2008 (*)
(Community trade mark – Invalidity proceedings – Community word mark VISIBLE WHITE – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94)
In Case T‑136/07,
Colgate-Palmolive Co., established in New York, New York (United States), represented by M. Zintler, H. Harmeling and K.‑U. Plath, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
CMS Hasche Sigle, established in Cologne (Germany),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 15 February 2007 (Case R 165/2005‑4) relating to invalidity proceedings between CMS Hasche Sigle and Colgate-Palmolive Co.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Sixth Chamber),
composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and I. Labucka, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 30 April 2007,
having regard to the response lodged at the Court Registry on 24 July 2007,
having regard to the altered composition of the Chambers of the Court of First Instance,
having regard to the designation of another judge to complete the Chamber as one of its members was prevented from attending,
further to the hearing on 6 June 2008,
gives the following
Judgment
Background to the dispute
1 On 20 April 1998, the applicant, Colgate-Palmolive Co., filed an application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of a Community trade mark under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The mark in respect of which registration was sought is the word sign VISIBLE WHITE.
3 The goods in respect of which registration was applied for fall within Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended (‘the Nice Agreement’), and correspond to the following description: ‘Toothpaste and mouthwash’.
4 On 3 November 1999, the word sign VISIBLE WHITE was registered as a Community trade mark.
5 On 8 October 2003, CMS Hasche Sigle applied for a declaration that that Community trade mark is invalid, claiming that it had been registered in breach of Article 7(1)(b) and (c) of Regulation No 40/94, since it was non-distinctive and descriptive.
6 On 10 December 2004, the Cancellation Division dismissed the application for a declaration of invalidity on the basis that the juxtaposition of the words ‘visible’ and ‘white’ differed from the grammatically correct expressions used by the English-speaking public to describe the results from using, or the intended purpose of, the goods in question.
7 On 4 February 2005, CMS Hasche Sigle filed notice of appeal against the decision of the Cancellation Division.
8 By decision of 15 February 2007, the Fourth Board of Appeal allowed the appeal and annulled the decision of the Cancellation Division, pursuant to Article 51(1)(a) of Regulation No 40/94 (‘the contested decision’). It essentially held that the contested trade mark was descriptive of the goods for which it had been registered, in breach of Article 7(1)(c) of Regulation No 40/94. It considered that the elements ‘visible’ and ‘white’ were individually descriptive, and that the combination of the two words was also descriptive in that it would be understood as a descriptive reference to the desirable result of using the toothpaste or mouthwash. The Board of Appeal also stated that the contested trade mark’s lack of distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94, derived from the descriptive nature of that mark.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
10 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 The applicant relies on two pleas in law, alleging infringement of Article 7(1)(c) and of Article 7(1)(b) of Regulation No 40/94.
Arguments of the parties
12 With regard to the first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, the applicant submits that the trade mark in question, considered as a whole and per se, is by no means descriptive of the goods falling within Class 3.
13 First, it challenges the Board of Appeal’s finding that the adjective ‘visible’ and the noun ‘white’ are descriptive of toothpaste and mouthwash.
14 The word ‘visible’ is not descriptive, as it does not refer to the intended purpose of toothpaste. The reason why toothpaste is used by the consumer is not to be visible, but to clean teeth and gums and keep them healthy. Similarly, the intended purpose of a mouthwash is not to be visible, but to fight bad breath and to keep teeth, gums and mouth hygienic.
15 Nor is the word ‘white’ descriptive, since it does not refer to the kind, or the quality or an essential characteristic of toothpaste. Toothpaste is not primarily white but rather comes in all different colours, such as mint, green, clear or light blue, yellow and pink, or even a combination of those colours. The same reasoning applies to mouthwash, which is generally presented in the form of a clear, transparent liquid which is blue, orange, red or green in colour. Lastly, the applicant submits that, contrary to what was stated by the Board of Appeal, the word ‘white’, by its reference to the whiteness of teeth, does not designate a desirable effect either of toothpaste – since even healthy teeth are never white but rather a natural shade of ivory – or of mouthwash, the purpose of which is to keep the mouth fresh and hygienic.
16 Secondly, the applicant denies that the expression ‘visible white’ as a whole is descriptive.
17 In the applicant’s submission, the Board of Appeal omitted to take into account the unusual juxtaposition of the words ‘visible’ and ‘white’.
18 The applicant observes that the Board of Appeal is inconsistent in its reasoning, where it holds that the word ‘visible’ is used as an adjective, when arguing that it is descriptive, whilst the word ‘white’ can be used grammatically correctly both as an adjective and as a noun.
19 According to the applicant, from a syntactical point of view, the use of the word ‘white’ as a noun to refer to toothpaste or mouthwash is rare and remarkable.
20 Accordingly, the combination ‘visible white’ is a surprising and unusual juxtaposition of words and a lexical invention that is not part of common parlance for the relevant public – the English-speaking consumer – and is a nonsense expression, and as such fanciful.
21 The applicant also argues that the combination of the words ‘visible’ and ‘white’ creates a pleonasm, since it describes the colour as ‘visible’. The sign VISIBLE WHITE is also tautologous since the colour ‘white’ is by definition ‘visible’.
22 That pleonasm amounts to an imaginative, fanciful element which renders the expression ‘visible white’ particularly distinctive and even mysterious, giving the message: ‘a white that can be seen’. The vague, abstract meaning of that combination cannot be associated with any specific goods.
23 The applicant also argues that the expression ‘visible white’ does not show that the target public immediately and without further reflection associates the contested mark with the goods in question. The expression does not have an obvious meaning but rather constitutes a suggestive concept.
24 In the present case, according to the applicant, the consumer has to make an effort in order to find out what ‘visible white’ could actually mean, since the expression suggests only that the colour white is itself ‘visible’.
25 The applicant observes that as the expression ‘visible white’ has no obvious meaning, any relationship between that trade mark and the goods in question has to be established by operating a chain of considerations as to the goods (toothpaste and mouthwash), their possible use and potential effects. The mere fact that the combination of words may allude to a potential effect of a product is not sufficient to establish a direct link between the trade mark and the product itself for the purposes of Article 7(1)(c) of Regulation No 40/94.
26 Lastly, the applicant notes that reasons are not given in the contested decision for its conclusions regarding the direct descriptive character of ‘visible white’ in relation to toothpaste and mouthwash. Reasons would have been all the more necessary, since similar combinations of words have proved to be eligible for registration when assessed in relation to an English-speaking public, for example, with a view to their registration in the United Kingdom or as Community trade marks.
27 In a second plea, the applicant challenges the Board of Appeal’s assessment that the mark VISIBLE WHITE is devoid of any distinctive character, arguing that it does have such a character.
28 OHIM supports the approach adopted by the Board of Appeal in the contested decision and submits that the applicant’s arguments are unfounded.
Findings of the Court
29 Under Article 7(1)(c) of Regulation No 49/94, registration is to be refused for ‘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’. Furthermore, Article 7(2) of Regulation No 40/94 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
30 According to settled case-law, Article 7(1)(c) of Regulation No 40/94 prohibits the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision therefore pursues an aim in the public interest, which requires that such signs and indications may be freely used by all (see Case T‑334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II-65, paragraph 23, and case-law cited).
31 Furthermore, the signs referred to by Article 7(1)(c) of Regulation No 40/94 are signs 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 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‑219/00 Ellos v OHIM (ELLOS) [2002] ECR II‑753, paragraph 28).
32 The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 39).
33 Accordingly, a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public (see EUROPREMIUM, cited above, paragraph 26, and case-law cited).
34 Lastly, it should be borne in mind that a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 32, and order in Case C‑326/01 P Telefon & Buch v OHIM [2004] ECR I‑1371, paragraph 28).
35 In the present case, the goods for which the mark was registered are toothpaste and mouthwash within Class 3 of the Nice Agreement, which are intended for the general public.
36 Moreover, since the word sign at issue is composed of two English words, the Board of Appeal considered whether there was a ground for refusal only in relation to the English-speaking public. Thus, under Article 7(2) of Regulation No 40/94, the relevant public in relation to which the absolute ground for refusal should be assessed is average English-speaking consumers (see, to that effect, ELLOS, paragraph 31, and EUROPREMIUM, paragraph 28).
37 As to the meaning of the word element ‘visible white’, paragraphs 22 and 23 of the contested decision indicate that that sign is composed of two commonplace English words, the meaning of which is sufficiently clear for no explanation to be required. According to the Board of Appeal in paragraph 24 of the contested decision, the word element thus created, considered as a whole, will be readily understood by the relevant public as a descriptive reference to the goods concerned or their essential characteristics.
38 Accordingly, for the purposes of Article 7(1)(c) of Regulation No 40/94 it is necessary to consider whether, from the point of view of the relevant public, there is a sufficiently direct and specific association between the word element ‘visible white’ and the goods in respect of which the mark was registered (Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 38).
39 As regards, first, the word ‘visible’, it is clear, as rightly observed by the Board of Appeal in paragraph 23 of the contested decision, that it is an English adjective meaning inter alia ‘capable of being perceived by the eye; capable of being perceived by the mind; evident’.
40 As regards the goods in Class 3 of the Nice Agreement for which the mark was registered, toothpaste and mouthwash, the Court finds that the word ‘visible’ is intended to inform consumers that the effects of the goods concerned can be seen by those consumers and the people around them. It follows that the word ‘visible’ is descriptive.
41 Turning next to the word ‘white’, as rightly noted by the Board of Appeal in paragraph 23 of the contested decision, it can be used as an adjective, indicating colour, or as a noun, denoting the white or light-coloured part of something.
42 It is, moreover, generally acknowledged that consumers seek to have a smile with teeth which are white, or as close as possible to white. Not only toothpaste but also mouthwash, especially when it contains whiteners, may serve to whiten teeth, when used in oral hygiene. It follows that the word ‘white’ is descriptive.
43 Thus, the words ‘visible’ and ‘white’ allow the public concerned to detect immediately and without further reflection the description of a fundamental characteristic of the goods concerned, namely that their use makes the white colour of teeth visible.
44 Since the word mark at issue is composed of a number of elements, however, it is necessary to ascertain whether the descriptive character which the components have been found to have is also established for the word element as a whole (Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 26).
45 In the present case, the Court finds, first, that the adjective ‘visible’ is placed before the word ‘white’, in keeping with English syntax, so that the association of the two words is not unusual in its structure (see, to that effect, ROBOTUNITS, paragraph 39) and, on the contrary, makes up a familiar expression in English for designating the goods concerned or presenting one of their essential characteristics, namely the fact that they make the white colour of teeth visible (see paragraph 43).
46 The Board of Appeal was thus right in finding, in paragraph 26 of the contested decision, that the expression in question informs the relevant consumer, clearly and immediately, of the intended use and characteristics of the goods concerned.
47 It follows that, viewed as a whole, the sign VISIBLE WHITE does have a sufficiently direct and specific relationship with the goods covered by the mark at issue.
48 As regards the argument alleging a contradiction resulting from the fact that similar signs have been registered for certain goods, the Court notes that, according to settled case-law, the registrability of a sign as a Community trade mark must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of earlier decisions of the OHIM adjudicating bodies which are not the subject-matter of the present proceedings before the Court (see Case T‑339/05 MacLean-Fogg v OHIM (LOKTHREAD), judgment of 12 June 2007, not published in the ECR, paragraph 56, and case-law cited).
49 In the light of the foregoing, the Court finds that the first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, must be rejected.
50 In those circumstances, it is not necessary to consider the second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94. According to settled case‑law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 40/94 applies for the sign at issue not to be registrable as a Community trade mark (Case C‑104/00 P DKV v OHMI [2002] ECR I‑7561, paragraph 29; Case T‑28/06 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN) [2007] ECR I-0000, paragraph 43).
51 The action must accordingly be dismissed.
Costs
52 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 COURT OF FIRST INSTANCE (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Colgate-Palmolive Co. to pay the costs.
Delivered in open court in Luxembourg on 9 December 2008.
[Signatures]