JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
7 September 2011(*)
(Community trade mark – Application for the Community word mark BETTER HOMES AND GARDENS – Absolute ground for refusal – Partial refusal by the examiner to register the mark – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009)
In Case T‑524/09,
Meredith Corp., established in Des Moines (United States of America), represented by R. Furneaux and E. Hardcastle, solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 September 2009 (Case R 517/2009-2), concerning an application for registration of the word sign BETTER HOMES AND GARDENS as a Community trade mark,
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and M. van der Woude, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 24 December 2009,
having regard to the response lodged at the Registry of the General Court on 1 April 2010,
having regard to the reply lodged at the Registry of the General Court on 17 June 2010,
having regard to the rejoinder lodged at the Registry of the General Court on 12 August 2010,
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 its Rules of Procedure,
gives the following
Judgment
Background to the dispute
1 On 18 September 2008, the applicant, Meredith Corp., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the word sign BETTER HOMES AND GARDENS.
3 The goods and services in respect of which registration was sought are in Classes 16, 35 and 36 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; business forms; business cards; magazines and other publications’;
– Class 35: ‘Advertising; business management; business administration; office functions; franchising, namely consultation and assistance in business management, organisation and promotion; advertising and auctioneering services; provision of assistance in the establishment of franchises; business management and consultation services; advisory, consultancy and information services relating to the aforesaid services’;
– Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs; advisory, consultancy and information services relating to the aforesaid services’.
4 By decision of 5 March 2009, the examiner, pursuant to Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009), firstly, allowed registration of the mark applied for in respect of the goods in Class 16 and certain goods or services in Class 35 and, secondly, refused registration for the ‘auctioneering services’ in Class 35 and the services in Class 36 referred to in paragraph 3 above.
5 On 5 May 2009, the applicant filed a notice of appeal against that decision in so far as it concerned solely the services in Class 36 of the Nice Agreement.
6 By decision of 23 September 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In that decision, OHIM held, inter alia, that the advertising slogan BETTER HOMES AND GARDENS, which conveys a banal, laudatory and informative message, which the relevant public will understand without any particular effort of reflection, did not constitute an indication of a particular business origin. Consequently, it held that the mark applied for could not be eligible for registration in respect of the services coming within Class 36 of the Nice Agreement.
Forms of order sought by the parties
7 The applicant claims that the General Court should:
– annul the contested decision in so far as the Board of Appeal refused to register the mark applied for in respect of the services in Class 36 of the Nice Agreement;
– order OHIM to pay the costs.
8 OHIM contends that the General Court should:
– dismiss the application;
– order the applicant to bear the costs.
Law
9 The applicant relies, essentially, on a single plea in law alleging a breach of Article 7(1)(b) of Regulation No 207/2009.
10 According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character may not be registered. Article 7(2) of that regulation provides that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
11 The concept of general interest underlying Article 7(1)(b) of Regulation No 207/2009 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service designated by the mark to the consumer or end-user. The absolute ground for refusal provided for under Article 7(1)(b) of Regulation No 207/2009 thus seeks to enable the consumer or end-user, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 56 and the case-law cited). In order for a trade mark to possess distinctive character, within the meaning of those provisions, it must therefore serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see Case C‑144/06 P Henkel v OHIM [2007] ECR I‑8109, paragraph 34, and Case C‑398/08 P Audi v OHIM [2010] ECR I‑0000, paragraph 33 and the case‑law cited). It is not necessary, for that purpose, for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (judgment of 10 October 2008 in Joined Cases T‑387/06 to T‑390/06 Inter-IKEA v OHIM (Representation of a pallet), not published in the ECR, paragraph 27, and judgment of 17 November 2009 in Case T‑473/08 Apollo Group v OHIM (THINKING AHEAD), not published in the ECR, paragraph 26).
12 By contrast, signs which do not enable the public concerned to repeat a purchasing experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services in question, are devoid of any distinctive character. Such is the case, in particular, of signs which are commonly used in the marketing of the goods or services concerned. Such signs are in fact deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the product or service in question (see, to that effect, judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 29 and the case-law cited).
13 Moreover, the distinctive character of a mark must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of the mark on the part of the relevant public, which is reasonably well-informed and reasonably observant and circumspect (see Audi v OHIM, cited in paragraph 11 above, paragraph 34 and the case-law cited, and Representation of a pallet, cited in paragraph 11 above, paragraph 28 and the case-law cited).
14 Finally, as regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (see Audi v OHIM, cited in paragraph 11 above, paragraphs 35 and 36 and the case-law cited).
15 In the present case, as regards, firstly, the relevant public, on the one hand, although the applicant points out that, according to case-law, the relevant public is ‘normally well-informed, and aware and possibly reasonably attentive or even very attentive’, the applicant does not, however, put forward any argument or evidence designed to establish that the Board of Appeal was wrong to take the view, in paragraph 12 of the contested decision, that the services covered by the mark applied for, such as insurance or financial affairs, are directed at average consumers. On the other hand, the applicant does not dispute the Board of Appeal’s assessment, in the same paragraph of the contested decision, that the relevant public is the English-speaking public. In that regard, it should be noted that, if the mark applied for, which is composed of four English words in common use, namely ‘better’, ‘homes’, ‘and’ and ‘gardens’, was not perceived by the English-speaking part of the public located in the territory of the European Union (‘EU’) as indicating the commercial origin of the services in question, that circumstance would justify refusal to register that mark.
16 The Board of Appeal therefore acted correctly in examining, in the contested decision, whether the mark applied for would be perceived as distinctive by the average EU consumer who is, first, reasonably well-informed and reasonably aware and attentive, and, second, English-speaking.
17 Secondly, with regard to the Board of Appeal’s assessment of the meaning of the mark applied for, it must be noted, as the applicant has pointed out and as has been established by case-law in the case of compound word signs, that in order to assess whether or not a mark is devoid of distinctive character, the overall impression given by it should be taken into consideration. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see, to that effect, Case C‑238/06 P Develey v OHIM [2007] ECR I‑9375, paragraph 82, and THINKING AHEAD, cited in paragraph 11 above, paragraph 31).
18 In that regard, firstly, having noted that the mark applied for was an advertising slogan (paragraph 13 of the contested decision), the Board of Appeal expressed the view that an advertising slogan ‘is only distinctive … if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (paragraph 14 of the contested decision). Next, the Board of Appeal noted that ‘the public is [not necessarily] accustomed to perceive [slogans] instantly as identifying the trade origin of the goods or services’ (paragraph 15 of that decision). Finally, it found that ‘a slogan that is banal, commonplace or directly descriptive of a characteristic of the relevant goods or services is unlikely to possess any distinctive character’ (paragraph 16 of that decision). Secondly, taking account of the mark applied for, on the one hand, the Board of Appeal found that the word sign BETTER HOMES AND GARDENS, the meaning of which the relevant public understands, produced, when evaluated as a whole, ‘a sign that is, at most, the sum of its parts’ (paragraph 17 of the contested decision). According to the Board of Appeal, the relevant public will not perceive it as a sign that is ‘unusual …, but rather as a meaningful expression indicating that the applicant offers insurance, financial, real estate and other services in Class 36 [of the Nice Agreement] relating to (better) homes and gardens’ (paragraph 17 of the contested decision). On the other hand, it found that ‘the message of the slogan is evident, without any particular mental exertion, to any public’. In that regard, it held that ‘[t]herefore, the slogan is banal as it is a simple and direct informative and laudatory message’, that it ‘does not constitute an indication of a given business origin’, that ‘other enterprises may also be in a situation in which they legitimately wish to use such a slogan or a [very similar] slogan’, and, therefore, that ‘the mark [applied for] cannot be accepted for the services applied for in Class 36 [of the Nice Agreement]’ (paragraph 18 of that decision).
19 Having regard to the findings of the Board of Appeal set out in paragraph 18 above, firstly, it is not disputed that the meaning of the word sign BETTER HOMES AND GARDENS will be understood unequivocally by the English‑speaking portion of the relevant public. Furthermore, as the Board of Appeal correctly pointed out, in paragraph 18 of the contested decision, in characterising the sign as ‘banal’, that sign does not present, contrary to what the applicant claims, in the light of the rules of English syntax, grammar, phonetics or semantics, an unusual nature which can lead the relevant public to make an association of a different kind. In that regard, although the applicant claims that the mark applied for has a certain level of originality and fancifulness, it fails to adduce any argument or evidence in support of such an assertion. That assertion must therefore be rejected as unfounded.
20 Next, even though, as the parties agree, the words comprising the expression BETTER HOMES AND GARDENS are not descriptive of the services in Class 36 of the Nice Agreement covered by the mark applied for, the fact none the less remains, as the Board of Appeal rightly found in paragraphs 17 and 18 of the contested decision, and contrary to the applicant’s assertions, that that mark will be understood directly, without any particular mental exertion by the relevant public, as alluding to the fact that those services aid in acquiring better homes and gardens, and not merely, as the applicant claims, that they ‘may allude to an aspiration of the consumer’. In that regard, it is, in any event, necessary to reject as ineffective the applicant’s arguments seeking to establish that the mark applied for does not breach Article 7(1)(c) of Regulation No 40/94 on the ground that it is not directly descriptive of the services covered. Indeed, as paragraph 20 of the contested decision expressly states, the Board of Appeal refused registration of the mark applied for in respect of the services in Class 36 of the Nice Agreement on the basis of Article 7(1)(b) of Regulation No 207/2009, and not on the basis of Article 7(1)(c) of that regulation.
21 Furthermore, contrary to what the applicant essentially argues, first, the expression BETTER HOMES AND GARDENS will be perceived by the relevant public not only as being of a laudatory nature, in that it extols the merits of the services which it covers, but also as being of an informative nature, in that it informs the relevant public of the specific nature of those services. Second, it cannot be ruled out that competitors of the applicant may legitimately wish to use that expression to promote services similar to those covered by the mark applied for which they market. Therefore, the Board of Appeal was right to hold, in paragraph 18 of the contested decision, on the basis of the two findings above, that the mark applied for will not be perceived by that public as an indication of a given business origin. In that regard, in so far as the applicant claims that the Board of Appeal erred in finding that its competitors might legitimately wish to use the slogan BETTER HOMES AND GARDENS, such an assertion must be rejected as unfounded since it is not supported by any argument or evidence.
22 Finally, as the Board of Appeal in essence found, in paragraph 18 of the contested decision, in stating that the expression BETTER HOMES AND GARDENS did not constitute an indication of a given business origin, that expression does not, beyond its sole informative and laudatory message seeking to promote the services covered by the mark applied for, possess elements making it possible for the relevant public easily and immediately to memorise the sign as being a distinctive mark for the services covered. Indeed, on the one hand, in addition to the fact that the applicant does not put forward any argument or evidence supporting its statement that the relevant public is used to being exposed to marks of a kind similar to the mark applied for, such a statement contradicts its argument, which is likewise not supported, to the effect that the mark applied for is ‘not a combination of elements that are typically used in relation to insurance, financial, monetary or real-estate services’. On the other hand, in so far as the applicant claims that, according to case-law, it is not necessary, when assessing the distinctive character of a mark, that the mark should convey exact information as to the identity of the manufacturer of the product or the supplier of services, suffice it to state that the Board of Appeal, in accordance with the case-law set out in paragraph 11 above, examined, in the contested decision, whether the mark applied for enabled final consumers to distinguish, without any possibility of confusion, that service from services which have a different origin. The applicant’s arguments in this respect must therefore be rejected as unfounded.
23 In the light of the considerations set out in paragraphs 19 to 22 above, it must therefore be stated that, contrary to what the applicant essentially claims, the Board of Appeal did not merely exclude the possibility that the mark applied for could be registered on the sole ground that it constituted an advertising slogan. Indeed, it was after examining the possible distinctive character of that slogan that the Board of Appeal formed the view, taking account, first, of the fact that the relevant public would perceive the word sign BETTER HOMES AND GARDENS as a banal, informative and laudatory advertising slogan of the services in Class 36 of the Nice Agreement, and, second, of the possibility that the applicant’s competitors might legitimately seek to use it in connection with the marketing of their own services, that the mark applied for would not allow for identification of those services as coming from a specified undertaking.
24 Since the mark applied for is not particularly original or resonant, and does not require at least some interpretation or thought on the part of the relevant public, within the terms of paragraph 57 of the judgment in Audi v OHIM, cited in paragraph 11 above, it must be held that that mark is devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal for that reason acted correctly in law in finding, in paragraph 18 of the contested decision, that the expression BETTER HOMES AND GARDENS could not be accepted for registration in respect of the services which it covers and which come within Class 36 of the Nice Agreement.
25 The other arguments which the applicant puts forward in this respect cannot invalidate that finding.
26 First, in so far as the applicant submits that the expression BETTER HOMES AND GARDENS is not an advertising slogan, to the extent to which a slogan usually has a correlation with the nature of the products being sold, whereas a mark is composed, as in the present case, of an adjective and common names, and, therefore, that the Board of Appeal was wrong to examine the mark applied for in the light of the case-law applicable to advertising slogans, that argument must be rejected as unfounded. On the one hand, to the extent to which, as the Board of Appeal correctly noted in paragraph 18 of the contested decision, the expression BETTER HOMES AND GARDENS will be perceived by the relevant public as a simple and direct informative and laudatory message aimed at promoting the services covered by the mark applied for, the Board of Appeal did not commit an error of assessment in referring to that expression as an advertising slogan. On the other hand, and in any event, even if it were to be assumed that the Board of Appeal did commit an error of assessment in that regard, that would have no bearing on the conclusion set out in paragraph 24 above to the effect that that expression has no distinctive character.
27 Second, it is necessary to reject as unfounded the applicant’s alternative argument that the Board of Appeal applied, in paragraph 14 of the contested decision, set out in paragraph 18 above, an excessively severe criterion in the examination of the distinctive character of the sign for which registration is sought. In that regard, the applicant submits that the Board of Appeal was wrong to take the view that an advertising slogan can be registered as a mark only if, first, it is perceived ‘immediately’ as an indication of the commercial origin of the services which it designates, and, second, the relevant public distinguishes ‘without any possibility of confusion’ the services covered by that mark from those which have a different commercial origin. Indeed, that assessment of the Board of Appeal does not, in any event, call into question the conclusion according to which, as is clear from paragraphs 19 to 22 above, the Board of Appeal examined in this case, in accordance with the case-law, whether or not the mark applied for had a sufficiently distinctive character to be registered.
28 Third, the applicant’s argument that the Court of Justice’s reasoning in the judgment in Audi v OHIM, cited in paragraph 11 above, should, in essence, lead the General Court to annul the contested decision, must be rejected as unfounded. In paragraph 47 of that judgment, the Court of Justice noted that the mark VORSPRUNG DURCH TECHNIK, which means, inter alia, ‘advance or advantage through technology’, had a distinctive character for the relevant public since, as the General Court had held, that mark could have ‘a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered’. However, unlike the mark VORSPRUNG DURCH TECHNIK, the mark here applied for, which does not make possible identification in this case of the commercial origin of the services which it covers, has no distinctive character, as has been stated in paragraph 24 above.
29 Fourth, in so far as the applicant claims that the mark applied for operates as the title for a magazine published by it, that that mark is used for services which it categorises as ‘ancillary’ and that that mark was accepted by OHIM for the registration of goods and services other than those covered by the contested decision, those arguments must be rejected as ineffective. To the extent to which, as is clear from the case-law set out in paragraph 13 above, the distinctive character of a mark is assessed solely in the light of the goods or services for which registration is sought, the fact that the expression BETTER HOMES AND GARDENS had been registered for goods or services other than those examined in the contested decision, or that it had been used either as a title for a magazine or as a designation for other services, which the applicant, moreover, does not identify, is irrelevant to the conclusion set out in paragraph 24 above, according to which the Board of Appeal did not err in forming the view, with regard to the services in Class 36 of the Nice Agreement which the relevant public understands as aiding in the acquisition of better homes and gardens, that the mark applied for did not have any distinctive character within the terms of Article 7(1)(b) of Regulation No 207/2009.
30 In those circumstances, the single plea in law raised by the applicant must be rejected and the action accordingly dismissed.
Costs
31 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 (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Meredith Corp. to pay the costs.
Pelikánová | Jürimäe | Van der Woude |
Delivered in open court in Luxembourg on 7 September 2011.
[Signatures]