JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
12 June 2007 (*)
(Community trade mark – Application for the Community word mark LOKTHREAD – Absolute grounds for refusal of registration – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94)
In Case T‑339/05,
MacLean-Fogg Co., established in Mundelein, Illinois (United States), represented by S. Prückner and A. Franke, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of OHIM of 20 June 2005 (Case R 1122/2004-1), concerning the registration of the word mark LOKTHREAD as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, E. Martins Ribeiro and K. Jürimäe, Judges,
Registrar: K. Pocheć, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 9 September 2005,
having regard to the response lodged at the Court Registry on 18 January 2006,
further to the hearing on 16 January 2007,
gives the following
Judgment
Background to the dispute
1 On 31 October 2003, the applicant 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 in respect of which registration was sought is the word sign LOKTHREAD.
3 The goods in respect of which registration was sought are in Class 6 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 are defined as: ‘[b]olts, bolts of metal, nuts, nuts of metal’.
4 In a communication of 5 March 2004, the examiner informed the applicant that the trade mark requested did not appear to be eligible for registration, pursuant to Article 7(1)(b) of Regulation No 40/94. He indicated, in particular, that, in relation to the goods concerned, potential customers who were presented with the trade mark LOKTHREAD would see in it a claim that the goods had a thread that locks. The examiner therefore invited the applicant to file observations within a two‑ month period.
5 By letter of 30 April 2004, the applicant filed its observations on the objections of the examiner and stated in essence that, in view of the degree of specialisation of its customers and the perceptible differences between the words ‘lock thread’ and the requested trade mark LOKTHREAD, the latter would be treated by its customers as a piece of information indicating the source of the goods and not as a claim that the goods have a thread that locks.
6 By a decision of 30 September 2004, the examiner refused the application on the ground that the Community trade mark applied for came within the grounds for refusal in Article 7(1)(b) and (c) of Regulation No 40/94, as the trade mark, when considered as a whole, was descriptive and lacked distinctiveness. The examiner indicated that an internet search had revealed that the expression ‘LOKTHREAD’ was used in respect of the goods concerned.
7 On 30 November 2004, the applicant filed notice of appeal at OHIM against the decision of the examiner, pursuant to Articles 57 to 62 of Regulation No 40/94.
8 On 14 February 2005, the appeal was submitted to the Examination Division for interlocutory revision. The Examination Division did not rectify the decision and remitted the case, on 14 March 2005, to the Board of Appeal, pursuant to Article 60(2) of Regulation No 40/94.
9 By a decision of 20 June 2005 (‘the contested decision’), the First Board of Appeal, in essence, firstly found that the sign LOKTHREAD was made up of two English words and that it was not structurally unusual, since it did not deviate from the lexical rules of the English language. Visually, the term ‘lok’ was to be treated as a misspelling of ‘lock’ and, phonetically, the term ‘lok’ would be pronounced in the same way as the word ‘lock’. Secondly, in accordance with the definitions of the English terms ‘lock’ and ‘thread’, the Board of Appeal considered that the sign LOKTHREAD had the meaning of a thread structure used in a locking mechanism. As the sign was made up exclusively of two terms which were descriptive of characteristics of the goods in question, the mere combination of the components itself remained descriptive of those characteristics. The Board of Appeal therefore held that the trade mark applied for was descriptive of the goods, with the effect that, pursuant to Article 7(1)(c) of Regulation No 40/94, it was not registrable.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 In support of its application for annulment of the contested decision, the applicant relies on two pleas, the first alleging infringement of Article 7(1)(c) of Regulation No 40/94 and the second alleging infringement of Article 7(1)(b) of the regulation.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
13 The applicant reiterates, first of all, the case-law of the Court of Justice and the Court of First Instance concerning the essential function of the trade mark, the public interest underlying the grounds for refusal to register in Article 7(1) of Regulation No 40/94, and the fact that only those signs and indications 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, goods or services such as those in respect of which registration is sought are ineligible for registration (Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 25; Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 35; Case C‑299/99 Philips [2002] ECR I‑5475, paragraph 30; Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 67; Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 18; Case C‑329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraph 25; Case T‑34/00 Eurocool Logistik v OHIM(EUROCOOL) [2002] ECR II‑683, paragraph 38; and Case T‑289/02 Telepharmacy Solutions v OHIM(TELEPHARMACY SOLUTIONS) [2004] ECR II‑2851, paragraph 23).
14 Concerning the relevant public, the applicant states that the goods concerned are primarily marketed to equipment manufacturers who will have a specific knowledge of them or also to do-it-yourself enthusiasts. Consequently, the assessment of the descriptive character of the sign LOKTHREAD must be made both in respect of professionals as well as the average consumer in general, who should be assumed to be well informed and reasonably observant and circumspect. The relevant public is the consumer in the whole of the European Community and not the English-speaking public, as was wrongly stated by the Board of Appeal, since the term LOKTHREAD does not belong to any particular European language and is a neologism of unknown origin and unusual structure.
15 According to the applicant, it is necessary, within the framework of Article 7(1)(c) of Regulation No 40/94, to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the category of goods concerned (Case T‑356/00 DaimlerChrysler v OHIM(CARCARD) [2002] ECR II‑1963, paragraph 28).
16 Contrary to the view of the Board of Appeal, the sign LOKTHREAD is unusual. It represents a single and unitary word and, consequently, the relevant public will not separate it into different parts or into words which could be included in it. Even if consumers recognised that the series of letters at the end of the trade mark may be read as the English words ‘read’ or ‘thread’, they would not, without further deliberation, understand the meaning of the corresponding series of letters ‘lokth’ or ‘lok’ at the beginning of the trade mark, which represent neither an English word or an abbreviation of an English word, nor a letter combination which can be found in any English dictionary or lexicon. Therefore, consumers will read and perceive the sign LOKTHREAD, taken as a whole, as a unitary word of unknown origin, not as a combination of two words. Neither the Board of Appeal nor the examiner has shown any evidence that LOKTHREAD is used in documents or in common parlance in English or in any other European language. Only the use of the words ‘lock’ and ‘thread’ or grammatically correct combinations like ‘thread lock’ or ‘self-locking thread-form’, in which the individual words are separated by a space, has been shown. Nor do the documents submitted show that the competitors of the applicant use a juxtaposition of the terms ‘thread’ and ‘lock’ in a single word such as ‘threadlock’ or ‘lockthread’ to designate goods.
17 In finding that the term ‘lok’ was a misspelling of ‘lock’ and that it would be pronounced exactly like the latter, so that the examination had to be based on ‘lock’, the Board of Appeal infringed Article 7(1)(b) and (c) of Regulation No 40/94, since only the mark applied for should be examined. Likewise, the Board of Appeal erred when it considered the combination to be made up of English terms because, on the contrary, English consumers will notice the visual and conceptual difference resulting from the difference in spelling and the fact that the term ‘lok’ is not an English word. Since it does not constitute a combination of English words, the applicant maintains that LOKTHREAD is a new invented word, in other words a neologism of unknown origin and unusual structure which does not belong to any specific European language. According to the case-law, for the examination of a trade mark it is the overall impression made by the mark in the form applied for which stands in the foreground.
18 In those circumstances, the word mark LOKTHREAD must be examined as a whole, concentrating on the overall impression created, even if an analysis of the components of the trade mark may be made when assessing that overall impression. In this respect, the applicant points out, firstly, that if a trade mark consists of a neologism, any descriptiveness for the purposes of Article 7(1)(c) of Regulation No 40/94 must be found not only in each of its components, but equally in the neologism itself. Secondly, 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 is descriptive of those characteristics only if there is no perceptible difference between the neologism or the word created and the sum of its component parts. Where the combination is unusual for the goods concerned, the neologism or the word creates an impression which, merely by virtue of this combination, is sufficiently far removed from the meaning arising from the component elements (Koninklijke KPN Nederland, cited in paragraph 13 above, paragraph 96; Campina Melkunie, cited in paragraph 13 above, paragraph 37; and Joined Cases T‑367/02 to T‑369/02 Wieland-Werke v OHIM(SnTEM, SnPUR, SnMIX) [2005] ECR II‑47, paragraph 31).
19 The applicant also claims that only trade marks which consist exclusively of a term descriptive of certain characteristics of goods cannot be registered and that where a mental step, albeit small, is needed clearly to recognise a particular meaning, the trade mark in respect of which registration is sought is no longer only descriptive, but suggestive. In this case, the Board of Appeal erred in finding that the meaning of the neologism LOKTHREAD was the same as that of the combination of the terms ‘lock’ and ‘thread’ and that consumers would perceive ‘lok’ as a misspelling of ‘lock’, without showing that the relevant public would be able, immediately and without further reflection, to make a direct association between the goods concerned and the unitary word mark LOKTHREAD (Case T‑359/99 DKV v OHIM (EuroHealth) [2001] ECR II‑1645, paragraph 35). According to the applicant, consumers would have to analyse the trade mark in order to find possible terms which are included in the newly invented word. Therefore, after examining the possible components of the trade mark, consumers would have to analyse the initial part ‘lok’, which does not exist in any European language to designate the goods in question. They would then have to reduce the part ‘lok’ to one possible interpretation, namely that it is a misspelling of the English word ‘lock’ and, in a final stage, reach the conclusion that the trade mark as a whole has the same meaning as the combination of the English words ‘lock’ and ‘thread’.
20 The applicant points out that an internet search for the term ‘lok’ revealed several hits for the use of ‘lok’, but that none of them could support the assumption that this term had to be understood as a misspelling or an abbreviation of the English word ‘lock’. The applicant has submitted extracts from the internet by way of evidence. Consequently, there is no document proving that the letter combination ‘lok’ is currently descriptive and no indication for such a use in the future. Therefore, the term ‘lok’ alone, in combination with or in separate form from the term ‘thread’, or in its joint form ‘lokthread’, cannot evoke the goods concerned in the mind of the relevant public.
21 Moreover, even assuming that the relevant public would interpret ‘lok’ as a modification of the term ‘lock’, it is unlikely that they would understand, at first sight, how the goods concerned function as a ‘thread that locks’. They would only understand ‘locks’ as locks for doors, windows, houses, cars and safes and so forth, but not as threads functioning as locks. Nor would they understand the combination ‘lock’ and ‘thread’ in a unitary word as directly and clearly descriptive in relation to the goods concerned. The German public would even understand the term ‘LOK’ as an abbreviation of the German word ‘Lokomotive’.
22 Even on analytical consideration, the trade mark LOKTHREAD cannot be considered a combination of two descriptive terms which would be recognised immediately within the unitary mark. This neologism as a whole is perceptibly different from the English words ‘thread’ and ‘lock’ or a combination of those words and cannot therefore be equated with or compared to a combination of those words. This neologism is unclear and vague and can be regarded as merely suggestive or allusive in relation to the goods concerned. Moreover, the applicant maintains that a number of registrations include the letter combination ‘lok’ or ‘lokk’ combined with a second word element for Class 6 goods, such as: LOKK.BOLT, LOKK.LATCH, Vino-LOK, TECHLOK, SAFE-LOK, SMART-LOK, POLY-LOK, EASILOK, VACULOK, COMPOSI-LOK, LONG-LOK, INFRALOK, UNILOK and SPEEDLOK. Those registrations show that the letter sequence ‘lok’ or ‘lokk’ in combination with words or syllables like ‘bolt’, ‘latch’, ‘vino’, ‘tech’ and ‘safe’, which are to be regarded as descriptive or not distinctive, have however been accepted by OHIM.
23 According to the applicant, the registration of the trade mark LOKTHREAD would not have the effect of preventing its competitors from describing the function of their goods in a necessary and correct way or drawing attention to the nature and quality of their goods. It states that it will not be able to prevent competitors from using the ordinary words ‘lock’ and ‘thread’ as such, or in combination with one another, or with other elements, by virtue of the registration of the trade mark LOKTHREAD. It adds that two trade mark registrations exist in the United States for LOK‑THREAD and THREAD-LOCK, and that consequently, even though the Community trade mark system is independent, registrations in that non-member country should be taken into consideration.
24 OHIM points out that, while a sign must be assessed as a whole, this does not exclude an analysis of each of its constituent parts. The applicant’s arguments concerning the single and unitary character of the term ‘lokthread’ cannot be defended, as the word ‘thread’ is currently used in English in the area of the goods concerned and the relevant public would therefore easily and immediately identify it rather than the term ‘read’, whose meaning is less close to the goods at issue. The sign at issue would therefore be perceived by the target public as made up of two constituent parts: the word ‘thread’ and the prefix ‘lok’. According to OHIM, it is unlikely that the sign could be perceived as a unitary word or that it might be read ‘lokth‑read’ or in any other combination. Linguistic usage shows that there are terms made up of two words joined together, such as ‘schoolboy’, ‘bedroom’ or ‘packthread’, and that, consequently, the public is familiar with this type of grammatical structure. Therefore, it is necessary to assess the linguistic value of the prefix ‘lok’ and the meaning of the expression ‘lokthread’ taken as a whole, as well as its descriptive character.
25 OHIM considers that the sign at issue was correctly considered to be equivalent to ‘lockthread’, since phonetically the terms ‘lok’ and ‘lock’ are pronounced in the same way and visually the term ‘lok’ is a misspelling of the word ‘lock’. The perception of the relevant public will therefore be the same as if it were faced with the term ‘lockthread’. Considered as a whole, the sign LOKTHREAD is a mere combination of two descriptive terms with an immediate and clear descriptive meaning in relation to the goods concerned. In this respect, OHIM points out that 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, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, 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 (Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 27).
Findings of the Court
26 Article 7(1)(c) of Regulation No 40/94 provides that ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered. Furthermore, Article 7(2) of Regulation No 40/94 provides that Article 7(1) ‘shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
27 According to case-law, Article 7(1)(c) of Regulation No 40/94 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31; Case T‑219/00 Ellos v OHIM (ELLOS) [2002] ECR II-753, paragraph 27; Case T‑348/02 Quick v OHIM (Quick) [2003] ECR II-5071, paragraph 27; and Case T‑316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II‑1951, paragraph 25; see also, by analogy, Windsurfing Chiemsee, cited in paragraph 13 above, paragraph 25; Koninklijke KPN Nederland, cited in paragraph 13 above, paragraphs 54 and 95; and Campina Melkunie, cited in paragraph 13 above, paragraph 35).
28 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 acquired 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 (OHIM v Wrigley, cited in paragraph 27 above, paragraph 30, and ELLOS, cited in paragraph 27 above, paragraph 28).
29 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 (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 40, upheld on appeal by order of 5 February 2004 in Case C‑150/02 P Streamserve v OHIM [2004] ECR I‑1461; and PAPERLAB, cited in paragraph 25 above, paragraph 25).
30 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 word or neologism itself must be found to be so (SnTEM, SnPUR, SnMIX, cited in paragraph 18 above, paragraph 31, and PAPERLAB, cited in paragraph 25 above, paragraph 26; see also, by analogy, KoninklijkeKPN Nederland, cited in paragraph 13 above, paragraph 96, and Campina Melkunie, cited in paragraph 13 above, paragraph 37).
31 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 assumes that, 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 (SnTEM, SnPUR, SnMIX, cited in paragraph 18 above, paragraph 32, and PAPERLAB, cited in paragraph 25 above, paragraph 27; see also, by analogy, KoninklijkeKPN Nederland, cited in paragraph 13 above, paragraph 100, and Campina Melkunie, cited in paragraph 13 above, paragraph 41). In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (see PAPERLAB, cited in paragraph 25 above, paragraph 27, and the case‑law cited).
32 The assessment of the descriptiveness of a sign may only be assessed, first, in relation to the understanding of the sign by the relevant public and, second, in relation to the goods or services concerned (EUROCOOL, cited in paragraph 13 above, paragraph 38, and MunichFinancialServices, cited in paragraph 27 above, paragraph 26).
33 As regards the target public, the Board of Appeal found, in paragraph 14 of the contested decision, that, in the absence of any restriction, given the nature of the goods concerned as worded in the Community trade mark application, those goods are also aimed at general consumers, such as do-it-yourself enthusiasts, so that they are aimed at a public of professionals as well as at the general public. The Board of Appeal also stated, in paragraph 15 of the contested decision, that the assessment of the distinctiveness or the descriptiveness of the sign concerned cannot be limited to the manufacturing industry, but must also have regard to the general public. The Board of Appeal thus concluded, in paragraph 16 of the contested decision, that ‘the relevant public in respect of which it is necessary to assess the absolute grounds for refusal under Article 7(1)(b) and (c) [of Regulation No 40/94] is the average, reasonably well‑informed and reasonably observant and circumspect general consumer’. The applicant has not contested that definition of the target public given by the Board of Appeal.
34 Consequently, the target public in respect of which it is necessary to assess the absolute ground for refusal is a public which is reasonably well‑informed and reasonably observant and circumspect.
35 The Board of Appeal also found, in paragraph 17 of the contested decision, that, since the mark applied for is composed of elements from the English language, the existence of absolute grounds for refusal referred to in the present case must be assessed mainly in respect of the English‑speaking part of the Community, namely the United Kingdom and Ireland.
36 The applicant challenges that statement and claims, on the contrary, that the mark in respect of which registration is sought is not composed of English terms but is a new invented word, moreover unitary, which does not belong to any particular European language, so that the existence of an absolute ground for refusal should not have been examined in relation to the English-speaking public alone.
37 That argument must be rejected.
38 First, the Board of Appeal rightly found in paragraphs 17 and 19 of the contested decision that the sign LOKTHREAD is composed of English words. The words ‘lock’ and ‘thread’ are both part of English vocabulary, the word ‘thread’ being a word which is commonly used in the English language in the area of the goods concerned. Thus, the sign LOKTHREAD may easily be broken down into two words, namely ‘lok’ and ‘thread’, the former being curiously similar to the word ‘lock’, referred to above, which exists in English vocabulary and which refers to a closing device, and the latter being identical to the corresponding English word. In addition, if the word ‘lok’ included the letter ‘c’ the word combination would be exactly the same as a coupling of the two English words concerned.
39 Second, contrary to the applicant’s submission, it is unlikely that the relevant public will immediately identify in the sign LOKTHREAD the word ‘read’ rather than the word ‘thread’, given that, as rightly pointed out by OHIM, the meaning of ‘read’ is further removed from the goods at issue than the word ‘thread’ and that, in addition, the sign begins with a word unknown to the English language, namely ‘lokth’. Thus, the relevant public would certainly not be led to reading that sign as ‘lokth-read’ or in any other combination.
40 It is therefore necessary to reject the applicant’s argument that the mark in respect of which registration is sought is not composed of English terms but is a new, unitary, invented word which does not belong to any particular European language. Thus, the Board of Appeal did not err in finding, in paragraph 17 of the contested decision, that the existence of absolute grounds for refusal must be assessed mainly in respect of the English‑speaking part of the Community and that the relevant public in the present case is the English‑speaking general public.
41 Consequently, under Article 7(2) of Regulation No 40/94, the target public by reference to which the absolute ground for refusal must be assessed is English-speaking, since the word sign in question is composed of elements of the English language (see, to that effect, ELLOS, cited in paragraph 27 above, paragraph 31; Case T‑295/01 Nordmilch v OHIM(OLDENBURGER) [2003] ECR II‑4365, paragraph 35; and Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 27).
42 Therefore, for the purpose of applying Article 7(1)(c) of Regulation No 40/94, it is necessary to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign LOKTHREAD and the goods in respect of which registration is sought (see, to that effect, Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 38, and the case‑law cited, and Case T‑311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II‑2957, paragraph 30).
43 As regards the meaning of the term ‘lokthread’, it should, first, be pointed out that the word ‘thread’ may be defined, as a noun, as is apparent from the definition given in paragraph 20 of the contested decision, which has not been contested by the applicant, as being a ‘helical groove in a cylindrical hole (female thread), formed by a tap or lathe tool, or a helical ridge on a cylindrical bar, rod, shank … (male thread), formed by a die or lathe tool’. As a verb, that word can mean ‘to produce a screw thread by cutting, rolling, tapping or grinding’. Those definitions are taken from the Collins English Dictionary.
44 Second, as regards the meaning of the term ‘lok’, it is true, as submitted by the applicant, that that term does not mean anything in English.
45 However, that term will naturally be assimilated by the English‑speaking public to the word ‘lock’, which does have a meaning in English. The target public will therefore consider, as the Board of Appeal rightly found in paragraph 20 of the contested decision, that ‘lok’ has been misspelled, especially since, phonetically, the two words are pronounced in exactly the same way. When the word is applied to the goods concerned, the relevant public will consider immediately and without any thought that ‘lock’ must naturally be substituted for ‘lok’. Therefore, the meaning of the word ‘lock’ needs to be examined.
46 According to the Board of Appeal, ‘lock’ has the following meaning: ‘1. a device fitted to a gate, door, drawer, [lid] … to keep it firmly closed and often to prevent access by unauthorised persons. 2. a similar device attached to a machine, vehicle … to prevent use by unauthorised persons. 3. the jamming, fastening, or locking together of parts’. As a verb, that word means, according to the Board of Appeal, ‘to fasten (a door, a gate …) or (of a door, etc) to become fastened with a lock, bolt … so as to prevent exit or entry; to secure (a building) by locking all doors, windows …; to fix or become fixed together securely or inextricably; to become or cause to become rigid or immovable: the front wheels of the car locked’. Those definitions, which were taken from the Collins English Dictionary, have not been disputed by the applicant.
47 In the light of those elements, the target public is able to understand the meaning of the terms ‘lok’ and ‘thread’. Therefore both of the terms which make up the LOKTHREAD mark must be regarded as descriptive of one of the intended uses or technical characteristics of the goods for which registration is sought (see, to that effect, PAPERLAB, cited in paragraph 25 above, paragraph 30).
48 Considered as a whole the term ‘lokthread’ means, in the field concerned by the Community trade mark application, a thread that locks, in other words, as rightly pointed out by the Board of Appeal in paragraph 21 of the contested decision, a thread structure used in a locking mechanism. Bolts and nuts are precisely among the components which make up locking mechanisms and the relevant public will therefore be able to perceive a characteristic of the product.
49 The applicant claims however that that characteristic is perceived only indirectly by the relevant public and only then if they give the matter some thought, since the sign LOKTHREAD is a neologism.
50 In that regard, it is sufficient to recall that, in accordance with the case‑law referred to in paragraph 31 above, 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 those 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 assumes that, 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.
51 In the present case, it must be found that the mere combination of the words ‘lok’ and ‘thread’, the first being descriptive of the intended use and the second of a technical characteristic of the goods concerned, is itself also descriptive of that intended use and of that characteristic of those goods.
52 Because that combination is not unusual, the neologism resulting from the joining together of those two components does not create an impression which is sufficiently far removed from that produced by the mere combination of the words ‘lok’ and ‘thread’. Such a combination of words is in conformity with the rules of syntax and grammar of the English language and is not unusual in the structure of that language. It is thus common, as rightly pointed out by OHIM, to create words by coupling together two words each of which has a meaning, such as ‘schoolboy’, ‘bedroom’ or ‘packthread’.
53 In that regard, it should be recalled that, in paragraph 26 of the judgment in Case T‑19/99 DKV v OHIM(COMPANYLINE) [2000] ECR II‑1, the Court found that the fact of coupling together the words ‘company’ and ‘line’ without any graphic or semantic modification did not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant’s services from those of other undertakings and added that the fact that the sign COMPANYLINE as such did not appear in dictionaries – whether as one word or otherwise – did not in any way alter that finding (a point confirmed in paragraph 23 of the judgment in Case C‑104/00 P DKV v OHIM [2002] ECR I‑7561).
54 That same finding applies in the present case, in such a way that the fact, relied on by the applicant, that the sign LOKTHREAD as such does not appear in dictionaries – whether as one word or otherwise – does not in any way alter the finding that that sign is descriptive of the goods concerned for the purposes of Article 7(1)(c) of Regulation No 40/94, especially since, in accordance with the case‑law cited in paragraph 27 above, that provision pursues an aim in the public interest, which requires that such signs or indications may be freely used by all.
55 It also follows that the mere fact that the neologism contains a spelling mistake in one of its components cannot support the inference that the neologism is unusual given that, as rightly pointed out by the Board of Appeal in paragraph 28 of the contested decision, the relevant public will immediately recognise that misspelling, both phonetically and visually, and will therefore replace the misspelled word ‘lok’ with the word ‘lock’.
56 As regards the applicant’s argument that a number of registrations including the letter combination ‘lok’ have been accepted by OHIM, it is sufficient to point out that, according to settled case‑law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous practice of the Boards of Appeal (Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47; Case T‑36/01 Glaverbel v OHIM (glass-sheet surface) [2002] ECR II‑3887, paragraph 35; Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 32; and Case T‑346/04 Sadas v OHIM–LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 71).
57 As regards, finally, the two trade mark registrations in the United States for LOK-THREAD and THREAD-LOCK, which have been accepted, it should be pointed out that, according to settled case‑law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47; Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 31; and ARTHUR ET FELICIE, cited in paragraph 56 above, paragraph 70). Accordingly, the registrability of a sign as a Community trade mark is to be assessed solely on the basis of the relevant Community legislation.
58 It follows from all of the foregoing that the first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, must be rejected.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
59 The applicant states that, since, pursuant to Article 7(1) of Regulation No 40/94, it is sufficient that one of the absolute grounds for refusal applies for a sign not to be registrable as a Community trade mark and since the trade mark applied for was considered to be descriptive of the goods concerned, the Board of Appeal did not examine the applicant’s arguments based on Article 7(1)(b) of the Regulation. The examiner’s refusal to register the trade mark LOKTHREAD and the confirmation of that decision by the Board of Appeal also constitute an infringement of Article 7(1)(b) of Regulation No 40/94.
60 According to the applicant, the trade mark LOKTHREAD is an invented word, the beginning of which, ‘lokth’ or ‘lok’, is fanciful and imaginative and is usually not used in combination with the following parts ‘read’ or ‘thread’. The sign thus consists of an unusual juxtaposition of two syllables which cannot be identified as part of the English language. The applicant, referring to the statements made in the context of the first plea, points out that the inventive trade mark LOKTHREAD may only give a vague idea of its function and does not immediately inform consumers of any characteristic of the goods. The trade mark is therefore sufficiently fanciful and possesses a minimum degree of distinctiveness.
61 OHIM contends that the plea should be rejected.
Findings of the Court
62 In that regard, as is apparent from Article 7(1) of Regulation No 40/94, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (see SnTEM, SnPUR, SnMIX, cited in paragraph 18 above, paragraph 45, and the case‑law cited).
63 Consequently, the action must be dismissed without there being any need to give judgment on the second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94.
Costs
64 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 (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders MacLean-Fogg Co. to pay the costs.
Vilaras | Martins Ribeiro | Jürimäe |
Delivered in open court in Luxembourg on 12 June 2007.