JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
13 November 2008 (*)
(Community trade mark – Application for the Community word mark EASYCOVER – Absolute grounds for refusal – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 – Article 73 of Regulation No 40/94)
In Case T‑346/07,
Duro Sweden AB, established in Gävle (Sweden), represented by R. Bird, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and D. Botis, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 3 July 2007 (Case R 1065/2005-4) relating to an application for registration of the word mark EASYCOVER as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, S. Papasavvas (Rapporteur) and N. Wahl, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 13 September 2007,
having regard to the response lodged at the Court Registry on 19 December 2007,
further to the hearing on 12 June 2008,
gives the following
Judgment
Background to the dispute
1 On 11 November 2004 the applicant, Duro Sweden AB, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 trade mark for which registration was sought is the word mark EASYCOVER.
3 The goods in respect of which registration was sought are in Classes 19, 24 and 27 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, and correspond to the following description for each class:
– Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’;
– Class 24: ‘Textile and textile goods, not included in other classes’;
– Class 27: ‘Mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)’.
4 By decision of 1 July 2005, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) of Regulation No 40/94.
5 On 30 August 2005 the applicant lodged an appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the examiner’s decision.
6 By decision of 3 July 2007 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal on the ground that, for the goods in respect of which registration was sought, the mark EASYCOVER was descriptive and devoid of any distinctive character and was, therefore, caught by the ground for refusal in Article 7(1)(b) and (c) of Regulation No 40/94.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order the registration of the trade mark applied for as a Community trade mark;
– order OHIM to pay the costs.
8 At the hearing, the applicant withdrew its second head of claim, of which the Court took formal note in the minutes of the hearing.
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 raises three pleas in law alleging infringement, respectively, of Article 7(1)(c), of Article 7(1)(b) and of Article 73 of Regulation No 40/94.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
– Applicant’s arguments
11 The applicant claims that the contested decision infringes Article 7(1)(c) of Regulation No 40/94 and puts forward, in that regard, essentially five lines of argument.
12 In the first place, the applicant claims that, for the purposes of the application of Article 7(1)(c) of Regulation No 40/94, the Board of Appeal used a criterion for the assessment of a composite word mark different from that laid down by the Court of Justice in Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 41, (‘BIOMILD’), in Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 104, (‘POSTKANTOOR’), and in Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317 (‘SAT.1’). Although, according to the Court of Justice, for the registration of a composite word mark, only a perceptible difference is required between the mark taken as a whole and the elements of which it is composed, the Board of Appeal required that the mark create an impression ‘sufficiently far removed’ from that created by the mere combination of those elements. According to the applicant, the criterion propounded by the Board of Appeal requires a higher degree of distinctive character than that required by the case-law of the Court of Justice. In addition, it is based on a vague and indefinable requirement. Finally, the Board of Appeal elevated the secondary criterion, also set out in POSTKANTOOR and BIOMILD, concerning the expression ‘an impression which is sufficiently far removed’, to the level of principal criterion whereas it is not an independent criterion, but one aspect in assessing whether a perceptible difference exists, which alone is sufficient for the registration of a mark.
13 In the second place, as regards the relevant public, the applicant considers, first, that the Board of Appeal omitted to take into account the perception which specialist consumers would have of the trade mark applied for. Contrary to the finding of the Board of Appeal, the relevant goods are not intended solely for the general public. Thus, the goods in Class 19 are intended exclusively for professionals and those in Classes 24 and 27, with the exception of ‘linoleum and other materials for covering existing floors’ which are intended solely for professionals, are aimed at both professionals and the general public. In any event, the Board of Appeal failed to examine individually, or on the basis of the relevant groups, the relevant goods but held, in a general way, that they were all intended solely for the general public.
14 The applicant considers, second, that the Board of Appeal wrongly held that it was appropriate to take account of the perception of the average consumer the first time that he sees the mark in question. That finding is not supported by the case-law and does not take account of the fact that the consumer is deemed to be reasonably well informed and reasonably observant. Further, the Board of Appeal failed to consider that, having regard to the nature of the goods at issue, the average consumer’s attention would be relatively sustained. On the one hand, the nature of the goods implies a careful consideration of their qualities and characteristics. On the other hand, having failed to correctly identify the relevant average consumer, the Board of Appeal did not consider the characteristics of the specialised public which is reasonably well informed and assumed to have a greater awareness than the general public.
15 In the third place, the applicant claims that the Board of Appeal did not take account of the unusual character of the trade mark applied for in relation to the relevant goods and did not properly consider the impression produced by the trade mark as a whole. In particular, the Board of Appeal did not take account of aspects such as the existence of an element of imaginativeness and the absence of any specific information contained in the mark. In that regard, the applicant claims that the trade mark applied for has a vague and indeterminate meaning in relation to the relevant goods and that neither the words of which it is composed nor their combination convey a meaning describing those goods.
16 Thus, the applicant points out first that the word ‘easy’ is a general laudatory word in everyday language, which is incapable of describing any specific quality or characteristic of the relevant goods. Second, it notes that the word ‘cover’ can be considered as a noun (a cover) or as a verb (to cover), and that double syntactical role introduces an element of uncertainty as to the meaning conveyed by the mark. In addition, whether it is a noun or a verb, that word is not descriptive of any characteristic of the majority of goods in Class 19. As regards the other goods in Class 19 (‘asphalt, pitch and bitumen’), and the goods in Classes 24 and 27, although the word ‘cover’ may have a descriptive element in certain circumstances, its meaning is merely remote and suggestive in the majority of cases. In that regard, relying, inter alia, on research carried out on the internet, the applicant claims that other words are used more often than the word ‘cover’ (such as, for example, ‘covering’) in relation to the relevant goods.
17 Third, the trade mark applied for, taken as a whole, does not convey any precise information regarding the specific characteristics of the relevant goods. In that connection, the applicant claims, with regard to the meaning of the words of which it is composed, that the Board of Appeal erred in holding that the combination of those words conveys specifically the meaning ‘simple cover’ or ‘something that can be simply applied or laid over an object’. Further, the Board of Appeal did not take into account the lack of specific meaning of the combination, or the fact that it is an unusual way to describe the characteristics of the relevant goods. On the contrary, it established the meaning of the trade mark at issue by emphasising the words ‘easy’ and ‘cover’ taken individually, and in considering the impression given by the mark as a whole only as a secondary aspect. According to the applicant, the mark gives the general agreeable impression that something in relation to the cover or the act of covering can be performed without difficulty or without effort. The trade mark applied for is therefore characterised by the fact that it contains no specific indication as to what that something is. Further, in the applicant’s view, none of the possible meanings of the mark stand out above any other as being the most likely, and the average consumer would be unable to pin down what specific meaning is conveyed by the combination.
18 Consequently, since the trade mark applied for makes no reference to a specific characteristic or to the quality of the cover or the act of covering, it does not describe the kind, quality, quantity, intended purpose, value or other characteristics of the relevant goods. In that regard, the applicant adds, first, that the Board of Appeal, in paragraph 19 of the contested decision, wrongly determined the meaning of the mark working from an actual knowledge of the goods sold by the applicant under that trade mark. Second, the Board of Appeal failed to assess the trade mark applied for in relation to each of the different goods but assessed it against only a generalised conception of those goods and, consequently, did not take account of the characteristics and specific qualities of each of the goods or their link with the word ‘cover’. In support of that line of argument, the applicant relies on Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, paragraph 81, and Case T-87/00 Bank für Arbeit und Wirtschaft v OHIM (EASYBANK) [2001] ECR II-1259, paragraphs 28 to 32.
19 In the fourth place, the applicant claims that the trade mark applied for is grammatically and syntactically unusual. In its view, the Board of Appeal’s statements with regard to the rules of English grammar (paragraph 17 of the contested decision) are incorrect and led it to conclude wrongly that the mark complied with those rules.
20 In that regard, the applicant submits, first, that the trade mark applied for can be viewed as either a compound adjective or a compound verb. However, on the one hand, in English, compound adjectives are generally written with the individual components separated by either a hyphen or a space. The meaning of a compound adjective is, moreover, likely to change when it is written as a single word. On the other hand, compound verbs are rare in the English language and normally comprise two verbs or, less commonly, a noun followed by a verb. Consequently, it is generally not acceptable to write a compound adjective or a compound verb in the form of a single word. Contrary to what the Board of Appeal held, the mark does not therefore follow the rules of English grammar.
21 Furthermore, the uncertainty regarding whether the word ‘cover’ is a noun or a verb adds an element of unusual syntax to the trade mark applied for. That element of uncertainty and the failure to decline the word ‘cover’ give an unusual syntactical and grammatical structure to the mark on both a visual and an aural level. In any event, even if the mark were grammatically correct, its meaning would still be vague and indeterminate.
22 The Board of Appeal did not take into account the abundance of other trade marks, belonging to a well-known group and being used in the European Community, which consist of the word ‘easy’ adjoined to a noun. According to the applicant, the use of those marks has made the public accustomed to viewing them as a whole, taking less account of their component parts, and viewing them as trade marks. In that regard the applicant relies on SAT.1 (paragraph 44).
23 Lastly, the applicant relies on the granting to it, by the Swedish patent and trade mark registry, of a trade mark which is identical to that applied for in the present case, for goods in Classes 2, 19, 24 and 27, the goods in Classes 19, 24 and 27 being identical to those covered by the application in the present case. While acknowledging that the Court of First Instance is not bound by such a registration, the applicant considers it should be given some persuasive weight and be seen as indicative of the acceptance, by the Swedish patent and trade mark registry, of the compatibility of the trade mark applied for with First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) in a country where English is understood and spoken.
– OHIM’s arguments
24 OHIM contends that the trade mark applied for is descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94, given that it confines itself to praising an essential characteristic of the goods. It disputes all of the arguments put forward by the applicant in that regard.
25 In the first place, OHIM contends that, contrary to what the applicant claims, the Board of Appeal applied the correct criterion for assessing a composite mark comprising a combination of words.
26 In the second place, as regards the relevant public, OHIM accepts, first, that some of the relevant goods do, as the applicant claims, also target professionals. However, the goods in Class 19, with the exception of asphalt, pitch and bitumen, do not, as the applicant claims, target only professionals. In addition, the goods in Classes 24 and 27 target both professionals and the average consumer.
27 Secondly, even conceding that some of the relevant goods also target a professional public, OHIM considers that that circumstance will not influence the perception of the trade mark applied for. According to OHIM, when exposed to the word combination EASYCOVER, both well-informed professionals and reasonably well-informed DIY amateurs will immediately recognise its meaning and will realise that it is only a promotional formula highlighting desirable qualities of the goods, that is to say, that they are covers which are easy to use and put in place.
28 In the third place, as regards the alleged vague and indeterminate meaning of the trade mark applied for, OHIM contends, first, that there is no imaginativeness in the mark. The applicant limited itself to bringing together the two descriptive components ‘easy’ and ‘cover’ without introducing any variation, even minimal, upon seeing which the relevant public might perceive the resulting combination as odd or unusual. In that regard, OHIM notes that it is common, in English, to combine the qualifying adjective ‘easy’ with a noun. The resulting combination, as correctly pointed out by the Board of Appeal, is in accordance with the rules on grammar and syntax in the English language.
29 Second, OHIM is of the view that the argument claiming a need for a hyphen or a space between the components of a trade mark consisting of a compound adjective is unfounded. Therefore, the Board of Appeal rightly found that the expression ‘easycover’ does not diverge from the lexical rules of the English language, as the simple removal of the space between the two words does not constitute a perceptible divergence. In addition, as the Board of Appeal also found, OHIM contends that the mark applied for will be perceived, overall, as an expression with a clear and precise meaning, that is to say, that the relevant goods relate to a ‘simple cover’ or ‘something that is easily put or laid over an object’. That message will be clear to both well-informed and attentive professionals and to reasonably well-informed DIY amateurs. Finally, OHIM asserts that the expression ‘easycover’ will immediately be perceived by the English-speaking public, and by the entire public of the Community with a basic knowledge of the English language, as a purely informative message on the essential characteristics of the relevant goods, and not as the trade mark designating the applicant’s goods.
30 Therefore, OHIM contends that, overall, the expression ‘easycover’ does not enable the target public to identify the relevant goods as coming from a particular undertaking and to distinguish them from those of a different commercial origin.
31 As regards the reference to the judgment in EASYBANK, OHIM considers that the link between the meaning of the term ‘easycover’ and the relevant goods, where ease of use is an important and desirable feature, is immediate and direct, and not vague and indeterminate, as in EASYBANK.
32 Third, as regards the argument that the Board of Appeal failed to assess the trade mark for each of the relevant goods, OHIM accepts that, while it might be difficult to detect a clear and immediate link between ‘monuments, not of metal’ and the trade mark applied for, as far as the other goods are concerned, there is that type of link between their nature and characteristics and the meaning of the mark in question. In particular, the ‘non-metallic rigid pipes for building’ could be used as part of a covering structure which is easy to put in place. Further, the ‘non-metallic transportable buildings’ may also be used to provide cover. As for ‘building materials (non-metallic)’, that category is broad enough to include materials which are meant to cover a floor or to be used to erect and put in place a covering structure. The fact that that category may include goods in respect of which the mark is not directly descriptive cannot be taken into account, in accordance with settled case-law.
33 Fourth, in relation to the results of internet research, OHIM notes that, according to established case-law, it is irrelevant whether there are other, more usual, signs or indications than those of which the mark is comprised for designating the same characteristics of the goods or services referred to in the application for registration.
34 Fifth, OHIM disputes the arguments based on the alleged misuse by the Board of Appeal of prior knowledge of the goods sold by the applicant and those based on the existence of other trade marks composed of the word ‘easy’ combined with a noun.
35 In the last place, as regards the Swedish registration of an identical trade mark, OHIM points out that, according to well-established case-law, OHIM and, where appropriate, the Community judicature are not bound by a decision given in a Member State or in a third country.
Findings of the Court
36 Under Article 7(1)(c) of Regulation No 40/94 registration is to be refused to ‘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 that regulation states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
37 According to settled case-law, Article 7(1)(c) of Regulation No 40/94 pursues an aim in the public interest, which requires that indications or signs which are descriptive of the characteristics of the goods or services in respect of which registration is sought may be freely used by all (see judgment of 12 June 2007 in Case T-339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published in the ECR, paragraph 27 and the case-law cited).
38 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 40/94, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquires the goods or service designated by the mark 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 (see LOKTHREAD, paragraph 28 and the case-law cited).
39 Consequently, for a sign to fall within the scope of the prohibition in that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see LOKTHREAD, paragraph 29 and the case-law cited).
40 For a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94, it is not sufficient that each of its components may be found to be descriptive. The neologism or word itself must also be found to be so (see LOKTHREAD, paragraph 30 and the case-law cited).
41 A trade mark consisting of a neologism or a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that would be the case where, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, an analysis of the word at issue in the light of the appropriate lexical and grammatical rules is also relevant (see LOKTHREAD, paragraph 31 and the case-law cited).
42 It should also be borne in mind that the assessment of the descriptiveness of a sign may only be carried out, first, in relation to the understanding of the sign by the relevant public and, second, in relation to the goods or services concerned (see LOKTHREAD, paragraph 32 and the case-law cited).
43 In the present case, it must be stated, at the outset, that the plea alleging that the Board of Appeal used an incorrect criterion for the application of Article 7(1)(c) of Regulation No 40/94 is based on an inaccurate interpretation of the case-law and the contested decision, and therefore cannot succeed. Far from introducing a stricter criterion, for the purposes of applying Article 7(1)(c) of Regulation No 40/94, than that imposed by the case-law, the Board of Appeal restricted itself, in paragraph 14 of the contested decision, to recalling, in essence, the case-law according to which a combination of elements, each of which is descriptive of the characteristics of the goods or services, may not be descriptive provided that it creates an impression sufficiently far removed from that produced by the simple combination of those elements (BIOMILD, paragraph 40). Contrary to the applicant’s claims, the notion ‘sufficiently far removed’ is not a secondary criterion in relation to the criterion of ‘perceptible difference’. It is apparent, in essence, from the case-law, that the existence of such a difference assumes that the combination resulting from the bringing together of the two word elements is sufficiently far removed from that produced by the simple juxtaposition of those elements (see, to that effect, POSTKANTOOR, paragraph 104).
44 In the first place, as regards the target public, it should be observed that the Board of Appeal held, in paragraph 15 of the contested decision, that ‘the goods covered by the application [were] intended for the general public’ and that ‘as the trade mark applied for was composed of English words, the target group in question [was] English-speaking’.
45 In that regard, first, it must be held that, given their nature, the goods in Classes 19, 24 and 27 are intended not only for average consumers in general, in particular DIY amateurs, but also a public consisting of professionals. It should be pointed out, in that context, that, even if some of the goods may be intended principally for professionals, such as those in Class 19, it is nevertheless the case that the end consumer who entrusts the work requiring the use of those goods to a professional will normally choose the goods to be used, where necessary on the advice of that professional. Thus, even assisted by a professional, the consumer will be confronted with different goods which could be used, and he will choose those which suit him best from among those which may have been suggested to him by the professional. As a result, contrary to what the Board of Appeal held, the goods in question are intended both for the general public and professionals. However, in order to determine the consequences of that error for the legality of the contested decision, it remains necessary to examine whether the Board of Appeal’s assessment of the descriptive character of the trade mark applied for was correct (see paragraphs 49 to 68 below).
46 Second, it is important to bear in mind that the relevant public’s perception of the mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26). In the present case, given that the goods in question are goods which are used less frequently than everyday consumer goods, the public is likely to have a higher than normal level of attention when choosing the goods in question.
47 Third, under Article 7(2) of Regulation No 40/94, the target public by reference to whom the absolute ground for refusal must be assessed is, as the applicant accepts, English-speaking, since the word sign in question is composed of elements in English (see, to that effect, LOKTHREAD, paragraph 41 and the case-law cited).
48 It follows from the foregoing that the target public is English-speaking, has a higher than normal level of attention and consists of the general public and professionals.
49 In the second place, for the purpose of the application of Article 7(1)(c) of Regulation No 40/94, it is necessary to consider, on the basis of a given meaning of the word sign at issue, whether, from the point of view of the intended public, there is a sufficiently direct and specific relationship between the sign EASYCOVER and the goods in respect of which registration is sought (see, to that effect, LOKTHREAD, paragraph 42 and the case-law cited).
50 In respect of the sign EASYCOVER, first of all, structurally, that sign consists just of two words that are common in the English language, that is to say, on the one hand, ‘easy’ which can be used as an adjective or adverbially, and, on the other, ‘cover’ which can be used, as the applicant points out, both as a noun and as a verb. In that regard, that sign is not unusual in its structure but, on the contrary, as the Board of Appeal stated in essence in paragraph 17 of the contested decision, complies with the rules of syntax and grammar in English.
51 The applicant argues, in that regard, that in English compound adjectives are written with a hyphen or a space and compound verbs are highly unusual. It is therefore not possible to have a compound adjective or verb in a single word. Thus, contrary to what the Board of Appeal considered, the sign applied for does not respect the rules of English grammar, but has an unusual syntactical and grammatical structure.
52 It is, however, common in English to create words by coupling together two words each of which has a meaning (see, to that effect, LOKTHREAD, paragraph 52). Furthermore, in its judgment of 2 April 2008 in Case T-181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 44, the Court held that the sign STEADYCONTROL, which, as in the present case, is a neologism consisting of an English adjective and an English word which can be a noun or a verb, coupled together without spacing or a hyphen, complied with English lexical rules and rules on syntax. Lastly, the absence of a hyphen or a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s products from those of other undertakings (see, to that effect, Case T-316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II-1951, paragraph 37).
53 In those circumstances, the pleas concerning the allegedly imaginative nature of the sign applied for, its allegedly unusual grammar and syntax, and its non-compliance with the rules of the English language, must be rejected.
54 As regards, next, the meaning of the words composing the sign EASYCOVER, it should be noted, first, that ‘easy’, used as an adjective, means simple or without difficulty and, adverbially, without difficulty or exertion. Second, the word ‘cover’ means, inter alia, as a noun, something that is placed over or about another thing and, as a verb, inter alia to put, lay, or spread something over, on or before.
55 As regards, lastly, the meaning of the sign EASYCOVER taken as a whole, the Board of Appeal pointed out in paragraph 18 of the contested decision that, it conjured up the idea of ‘easy covering’ or of ‘something which can be easily applied or placed on an object’. That meaning, as understood by the Board of Appeal, appears to be correct. Having regard to its structure, which is not unusual, and to the fact that it complies with the rules of the English language (paragraph 50), the sign does not create an impression on the part of the target public sufficiently removed from that produced by the mere juxtaposition of the words to change their meaning or scope (see, to that effect, Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II-1963, paragraph 29; Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 39; and Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 32).
56 Concerning, second, the nature of the relationship between the sign applied for and the goods in question, it should be noted, as regards first of all the goods in Class 19, that that sign can serve to describe the quality or the intended use of those goods in the categories referred to in the application for registration, with the exception of the category ‘monuments, not of metal’.
57 As regards the goods in the categories ‘building materials (non-metallic)’ and ‘non-metallic transportable buildings’, the ease with which they can cover or be used to re‑cover something, or the fact that they can be easily laid, are the qualities of those goods which are likely to be taken into consideration when the target public is choosing those goods and which, therefore, constitute one of their characteristics. Such could be the case, inter alia, according to the examples provided by the parties at the hearing, with cement or tiling, in regard to those materials, and with work shelters or garden sheds in regard to such buildings. The same applies to goods in the category ‘asphalt, pitch and bitumen’. That category concerns goods in respect of which ease of application or the ease with which they can be used for re‑covering something (a floor for example) must be regarded as a quality which will be sought after by the target public. That is also the case as regards goods in the category ‘non-metallic rigid pipes for building’. The ease with which they enable something to be covered, such as electric cables, as was stated by OHIM at the hearing, constitutes one of their characteristics.
58 On the other hand, in relation to goods in the category ‘monuments, not of metal’, OHIM itself accepts, in its response that ‘it might be difficult to detect a clear and immediate link between “monuments, not of metal” and the [sign applied for]’. Clearly, there is no element which enables that sign to be regarded as designating a characteristic of monuments, not of metal, which could, as OHIM stated at the hearing, for example, be statues or funerary monuments. On account of their nature, there is nothing to indicate that those goods have the characteristic of enabling something to be easily covered or of being easily applied or laid on to something. Therefore, the sign applied for cannot be described as descriptive of them.
59 As regards, next, goods in Classes 24 and 27, the sign applied for can also be employed to designate their quality and intended use. Whether it concerns textiles or textile goods in Class 24, or mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile) in Class 27, the ease with which those goods can serve to cover or be laid on something is likely to be taken into consideration by the target public when making its choice. It is therefore a characteristic of those goods.
60 It follows that the sign applied for conveys a message which is immediately understandable and which can serve, in trade, to indicate the quality or intended use, and therefore the characteristics of the goods in question, with the exception of those in the category of ‘monuments, not of metal’. In that regard, it should be noted that it is irrelevant whether the characteristics described by the sign applied for are commercially essential or merely ancillary, as Article 7(1)(c) of Regulation No 40/94 does not draw any distinction in that regard (STEADYCONTROL, paragraph 43; see, also, by analogy, POSTKANTOOR, paragraph 102).
61 The applicant is therefore wrong, except as regards the goods within the category of ‘monuments, not of metal’, in claiming, on the basis of EASYBANK, that the sign EASYCOVER has a vague and unspecified meaning in relation to the goods in question and that it does not convey any precise information or a specific meaning regarding the goods or their characteristics. The argument that the elements which make up the sign applied for are not descriptive must also be rejected as invalid. That sign is, as a whole, descriptive, for the purposes of Article 7(1)(c) of Regulation No 40/94, of the characteristics of those goods, apart from ‘monuments, not of metal’, and is therefore caught by that provision, except as concerns the latter goods.
62 The argument that other terms would be more common to describe the goods in question or that none of the possible meanings of that sign stand out from the others as being more probable must also be rejected. On the one hand, it is irrelevant whether there are other signs or indications that are more usual than those composing the sign applied for for designating the same characteristics of the goods or services referred to in the application (see, to that effect, POSTKANTOOR, paragraph 57). On the other hand, in order to fall under the ground for refusal of registration in Article 7(1)(c) of Regulation No 40/94, it is sufficient that at least one of the possible meanings of a word sign identifies a feature of the goods or services concerned (CARCARD, paragraph 30).
63 It follows from the foregoing that the mark EASYCOVER, taken as a whole, presents, with regard to the target public, a sufficiently direct and concrete link with the goods covered by the application for registration, with the exception of those in the category of ‘monuments, not of metal’. In that regard, it should be added that, even if the mark EASYCOVER were not descriptive of all the goods within each of the categories in question, except for the category ‘monuments, not of metal’, the applicant applied for registration of the sign for all the goods within those categories without distinguishing between them, so that, accordingly, the Board of Appeal’s assessment must be upheld in so far as it relates to those categories of goods as a whole except for those goods in the category ‘monuments, not of metal’ (see, that effect, Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 46, and CARCARD, paragraph 36).
64 As regards the argument that the Board of Appeal assessed the descriptive character of the sign applied for, not on an individual basis, but according to a general notion of the goods, and therefore did not take into account their individual characteristics and qualities, it must be borne in mind that, where the same ground for refusal is put forward for a category or a group of goods or services, OHIM may restrict itself to all-embracing reasons for the goods and services concerned (see STEADYCONTROL, paragraph 42 and the case-law cited). In the present case, the contested decision satisfies that requirement, since, in paragraph 19 an assessment of the goods in question was carried out on the basis of a general homogeneous categorisation as materials that can be used in the construction or renovation of buildings. For some of the goods, a secondary categorisation was also effected, dividing floor coverings from wall coverings.
65 As regards, further, the claim that the Board of Appeal attributed a meaning to the sign on the basis of actual knowledge of the goods sold under the trade mark applied for, clearly that must be rejected. The examples set out in paragraph 19 of the contested decision to illustrate the link between the meaning of the sign applied for and the goods in question are expressed in general terms and concern, contrary to what the applicant appears to believe, possible uses for the goods in question. Moreover, nothing in the contested decision indicates that the applicant markets goods the qualities of which are related to its description.
66 Lastly, the plea concerning the existence of a Swedish registration for an identical trade mark for goods which are partially identical must also be rejected. 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. Therefore, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant Community rules. OHIM and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (see PAPERLAB, paragraph 37 and the case-law cited). It is necessary, on the same grounds, to reject the argument based on the existence of numerous trade marks containing the word ‘easy’ attached to a noun, which, according to the applicant, means that the public is accustomed to seeing such combinations as trade marks.
67 In the light of all of the foregoing, it must be concluded that, notwithstanding the Board of Appeal’s error in relation to the definition of the relevant public (see paragraph 45), the sign EASYCOVER is descriptive, for the purposes of Article 7(1)(c) of Regulation No 40/94, of the goods in respect of which registration was sought, with the exception of those in the category of ‘monuments, not of metal’.
68 Consequently, the first plea in law must be accepted in so far as the contested decision refused registration of the mark applied for in respect of goods in the category ‘monuments, not of metal’, and rejected in respect of all the other categories of goods.
The second plea in law, alleging an infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
69 According to the applicant, since the Board of Appeal wrongly found that the trade mark applied for infringed Article 7(1)(c) of Regulation No 40/94 and did not put forward any independent ground in respect of infringement of Article 7(1)(b) of that regulation, the contested decision did not properly examine whether the trade mark applied for infringes the latter provision. It further considers, with reference to the submissions made in the context of the first plea in law, that the trade mark applied for does not fall under Article 7(1)(b).
70 OHIM contends that the Board of Appeal correctly confirmed the examiner’s decision and refused the application on the basis of Article 7(1)(c) of Regulation No 40/94. In any case, according to well‑established case‑law, it is sufficient for one of the absolute grounds of refusal to apply for the sign to be ineligible for registration as a Community trade mark. Thus, since the Board of Appeal considered that the trade mark applied for fell within the ground for refusal in Article 7(1)(c) of Regulation No 40/94, there was no need to examine whether Article 7(1)(b) of the same regulation applies.
Findings of the Court
71 Under Article 7(1)(b) of Regulation No 40/94 ‘trade marks which are devoid of any distinctive character’ are to be refused registration. Furthermore, Article 7(2) of Regulation No 40/94 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
72 Moreover, the distinctive character of a mark can be assessed only, first, in relation to the goods or services in respect of which registration is sought and, second, in relation to the understanding which the relevant public has of that mark.
73 In the present case, in so far as the contested decision concerns goods in respect of which the sign EASYCOVER is descriptive, it should be recalled that, as is clear from Article 7(1) of Regulation No 40/94, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal applies (see Case T-360/99 Community Concepts v OHIM (Investorworld) [2000] ECR II-3545, paragraph 26 and the case-law cited). To that extent, this plea is, therefore, invalid.
74 By contrast, the plea must be examined inasmuch as the contested decision concerns goods in the category ‘monuments, not of metal’.
75 As is apparent from paragraph 22 of the contested decision, the Board of Appeal inferred, in essence, from the descriptive character of the sign EASYCOVER that it had no distinctive character. It has already been held above that, in respect of those goods in the category ‘monuments, not of metal’, registration of that sign could not be refused on the basis of Article 7(1)(c) of Regulation No 40/94. Consequently, the reasoning set out by the Board of Appeal in relation to Article 7(1)(b) of Regulation No 40/94 must be set aside, as it is based on the error thus found. Moreover, the contested decision contains no other grounds to support a determination that the mark EASYCOVER has no distinctive character in respect of those goods.
76 It follows that the plea alleging infringement of Article 7(1)(b) of Regulation No 40/94 must be accepted in so far as concerns goods in the category ‘monuments, not of metal’ and rejected in so far as concerns the other categories of goods.
The third plea in law, alleging infringement of Article 73 of Regulation No 40/94
Arguments of the parties
77 Referring to the finding that it is possible to form new words in the English language by joining existing words in different ways (paragraph 17 of the contested decision), the applicant claims that the Board of Appeal examined facts of its own motion, without giving the applicant an opportunity to file observations in that regard. The Board of Appeal did not cite any academic or other material in support of its assertion, which is, moreover, incorrect. According to the applicant, the rules of grammar and the structure of the English language are complicated matters and an academic expert opinion is required to understand them properly. They are not such well-known and incontestable facts that the Board of Appeal could invoke them without proof and without giving the applicant an opportunity to comment. The Board of Appeal thus infringed Article 73 of Regulation No 40/94. In that regard, the applicant relies on Case C-24/05 P Storck v OHIM [2006] ECR I-5677 (paragraphs 39 and 40), and OHIM v Celltech (paragraphs 40 to 46).
78 OHIM disputes the applicant’s argument.
Findings of the Court
79 Under Article 73 of Regulation No 40/94, the decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision applies both to facts and law, and to the evidence.
80 However, the right to be heard extends to all the factual and legal matters on which the decision-making act is based, but not to the final position which the authority intends to adopt (Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II-1917, paragraph 62).
81 In addition, under Article 74(1) of Regulation No 40/94, OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been cited by the applicant for the mark (Storck v OHIM, paragraph 50, and OHIM v Celltech, paragraph 38).
82 Although it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, that is not the case where facts which are well known are concerned (Storck v OHIM, paragraph 51, and OHIM v Celltech, paragraph 39), that is to say, facts which are likely to be known by anyone or which may be ascertained from generally accessible sources (Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 29, and Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 45).
83 In the present case it is clear first, that the applicant could have submitted its view, in the course of its appeal against the examiner’s decision, in regard to whether the sign applied for complies with the rules of English grammar, as is clear from paragraph 8 of the contested decision.
84 Furthermore, the findings of the Board of Appeal in relation to the construction, in the English language, of new words by joining words together and in relation to whether such words comply with grammatical and spelling rules, are well known facts. They are either likely to be known by everyone, or ascertainable from generally accessible sources, such as dictionaries, encyclopaedias or textbooks. In any event, those facts are not so complex that they require an academic expert opinion, as suggested by the applicant.
85 It follows from the foregoing that the Board of Appeal did not infringe Article 73 of Regulation No 40/94 and that, therefore, the third plea in law must be rejected.
Costs
86 Under Article 87(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the Court of First Instance may order that the costs be shared. In the present case, since the applicant’s action has been upheld in respect of only a single category of goods, the applicant must be ordered to bear its own costs and pay three‑quarters of OHIM’s costs.
On those grounds,
THE COURT OF FIRST INSTANCE
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 3 July 2007 (Case R 1065/2005‑4) in so far as concerns goods in the category ‘monuments, not of metal’;
2. Dismisses the action as to the remainder;
3. Orders Duro Sweden AB to bear its own costs and to pay three-quarters of OHIM’s costs. OHIM is ordered to pay one‑quarter of its own costs.
Martins Ribeiro | Papasavvas | Wahl |
Delivered in open court in Luxembourg on 13 November 2008.
[Signatures]