Case T‑611/13

Australian Gold LLC

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Invalidity proceedings — International registration designating the European Community — Figurative mark HOT — Absolute grounds for refusal — No descriptive character — Distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Second sentence of Article 75 of Regulation No 207/2009 — Cross-claim before the Board of Appeal — Article 8(3) of Regulation (EC) No 216/96 — Cross-claim before the General Court — Article 134(3) of the Rules of Procedure of 2 May 1991)

Summary — Judgment of the General Court (Second Chamber), 15 July 2015

1.      Community trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of the defence — Scope of the principle

(Council Regulation No 207/2009, Art. 75, second sentence)

2.      Community trade mark — Appeals procedure — Appeal to a Board of Appeal — Challenge to the contested decision by the defendant in its observations

(Commission Regulation No 216/96, Art. 8(3))

3.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Criteria

(Council Regulation No 207/2009, Art. 7(1)(c))

4.      Community trade mark — Surrender, revocation and invalidity — Application for annulment based on the existence of the descriptive character of a trade mark — Recognition of the descriptive character in relation to certain products falling within a category — Application of such recognition also to all the products in that category

(Council Regulation No 207/2009, Arts 7(1)(c), and 52(1)(a))

5.      Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Figurative mark HOT

(Council Regulation No 207/2009, Arts 7(1)(c), and 52(1)(a))

6.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Marks constituted of advertising slogans — Flattering promotional formula

(Council Regulation No 207/2009, Art. 7(1)(b))

7.      Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect

(Council Regulation No 207/2009, Arts 7(2), and 109; Council Regulation No 44/2001, fifteenth recital)

1.      See the text of the decision.

(see para. 18)

2.      See the text of the decision.

(see paras 24-26)

3.      See the text of the decision.

(see paras 34-36)

4.      See the text of the decision.

(see para. 44)

5.      The figurative mark HOT should not have been registered as a Community trade mark in respect of ‘massage oils, gels’ falling within Class 3 of the Nice Agreement and for ‘lubricants for pharmaceutical purposes’ falling within Class 5 of the said Agreement by reason of the existence of the absolute ground for refusal referred to in Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark.

From the point of view of the relevant public constituted by English-speaking consumers, the word ‘hot’ must be considered to designate the effects caused by ‘massage oils, gels’ and ‘lubricants for pharmaceutical purposes’. Those goods, whether or not they are adapted for medical use, are all intended to be spread over the skin by more or less repetitive movements creating a sensation of heat.

On the other hand, that mark is not descriptive of ‘bleaching and laundry preparations; soaps’ in Class 3 of the Nice Agreement and ‘nutritional supplements (for medical use)’ in Class 5 thereof. The word ‘hot’ cannot be regarded as designating the high temperature of the said products. Those products, which concern the care of laundry and the care and nutrition of persons do not, by nature, have a high temperature. On the contrary, for some of them, such as soaps, such a temperature even risks causing them to deteriorate.

Nor, moreover, does the word ‘hot’ designate the temperature of use of the products concerned. Whilst some of them may be used at a high temperature, such as ‘bleaching and laundry preparations’ or ‘nutritional supplements’, that condition of use does not characterise those goods, which can be used just as well at low temperatures.

Finally, the positive connotation of the other meanings of the word ‘hot’, namely ‘fashionable’, ‘attractive’ and ‘sexy’ is more a vague and indirect evocation than a direct and immediate designation of a quality or characteristic of the products concerned.

(see paras 37, 40, 49-51)

6.      See the text of the decision.

(see para. 57)

7.      The registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant legislation alone. Even though it is desirable for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to take into account decisions of national authorities concerning marks identical to those on which it has to rule and vice-versa, OHIM is not required to take those decisions into account, including decisions concerning identical marks, and assuming that it does take them into account, it is not bound by those decisions.

The provisions of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, as amended, and of Article 109 of Regulation No 207/2009 on the Community trade mark certainly do not invalidate that finding. As is clear, in particular, from recital 15 in the preamble to Regulation No 44/2001, that regulation seeks merely to ensure that irreconcilable judgments will not be given in two Member States and does not apply to OHIM. Furthermore, Article 109 of Regulation No 207/2009 seeks to prevent actions for infringement brought in national courts, one based on a Community trade mark and another on a national mark, giving rise to inconsistent decisions. It thus relates solely to the effects and not to the conditions governing protection of those marks.

The abovementioned finding is also not called into question by Article 7(2) of Regulation No 207/2009, which provides that the absolute grounds for refusal set out in paragraph 1 apply notwithstanding that they obtain in only part of the Union. Refusal of a national registration is based on national provisions implemented on the basis of a national procedure in a national context and is not therefore equivalent to a finding of the existence in a State of an absolute ground for refusal within the meaning of Regulation No 207/2009.

(see paras 60, 62, 63, 65)