JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
24 January 2008 (*)
(Community trade mark − Application for the Community word mark SAFETY 1ST – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)
In Case T‑88/06,
Dorel Juvenile Group, Inc., established in Canton (United States of America), represented by G. Simon, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 January 2006 (Case R 616/2004-2) relating to an application for registration of the word mark SAFETY 1ST as a Community trade mark,
THE COURT OF FIRST INSTANCEOF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President (Rapporteur), 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 17 March 2006,
having regard to the response lodged at the Court Registry on 15 June 2006,
further to the hearing on 18 October 2007,
gives the following
Judgment
Background to the dispute
1 On 15 June 2001, Safety 1ST, Inc., filed an application for a Community trade mark at 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 Registration as a mark was sought for the word sign SAFETY 1ST.
3 The goods in respect of which registration was sought are in Classes 12, 20, 21 and 28 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, for each of those classes, to the following description:
– ‘Bicycles, car seats, car beds, folding convertible car seats, car booster seats, child carriers, namely, strollers and carriages’, in Class 12;
– ‘Furniture, namely, juvenile high chairs, folding play yards for children, cribs, bassinets, toddler and youth beds, booster seats, bed rails, head boards, mattress for cribs, juvenile dressing tables, cradles and rocking chairs’, in Class 20;
– ‘Infant bath tubs, baby toilet trainers’, in Class 21;
– ‘Play and exercise equipment for children, namely, doorway jumpers, floor bouncers, floor exercisers, swings, and child walker/jumpers’, in Class 28.
4 By letter of 14 August 2001 addressed to OHIM, Safety 1ST requested OHIM to record the transfer to the applicant of the mark applied for. By letter of 9 October 2001, OHIM confirmed registration of the transfer.
5 By decision of 9 June 2004, pursuant to Article 38 of Regulation No 40/94, the examiner refused the application for the trade mark in respect of all the goods covered on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
6 On 21 July 2004 the applicant lodged an appeal, pursuant to Articles 57 to 62 of Regulation No 40/94, against the examiner’s decision.
7 By decision of 11 January 2006 (‘the contested decision’), notified to the applicant on 19 January 2006, the Second Board of Appeal dismissed the applicant’s appeal and upheld the examiner’s decision.
8 First, the Board of Appeal pointed out that the goods covered by the mark applied for are either explicitly aimed at children or, as in the case of bicycles, tend to be used by them. Therefore, the relevant public consists of the parents, family, or friends of children, in short, of average consumers. The Board of Appeal also decided to limit its examination to the English-speaking public (the contested decision, paragraph 16).
9 Secondly, the Board of Appeal observed that, contrary to the applicant’s assertions, the relevant public did not need to make any intellectual effort in order to perceive ‘1ST’ as a synonym for the English word ‘first’, especially in combination with the word ‘safety’ (paragraph 18 of the contested decision). As that public is preoccupied with the safety of the users of the goods in question, it would immediately and unambiguously perceive the sign SAFETY 1ST as a laudatory expression informing the potential buyer of those goods that safety is a priority. Consequently, due to the impression produced by the mark sought as a whole, the connection between that mark and the relevant goods is not sufficiently indirect to endow the mark with the minimum level of distinctiveness required. Moreover, the applicant had not claimed or submitted any evidence that the mark applied for had acquired distinctiveness through use in the relevant territory (the contested decision, paragraphs 19 and 20).
Forms of order sought by the parties
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 action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94.
Arguments of the parties
13 The applicant maintains that the mark applied for is not devoid of any distinctive character but, on the contrary, fulfils the essential function of a trade mark as it makes it possible for the intended public to identify the goods which it covers as coming from a specific undertaking and to distinguish them from those of other undertakings. The applicant submits, in that regard, that even slight distinctiveness is sufficient to allow the registration of a sign as a Community trade mark.
14 The applicant highlights the fact that the mark applied for consists, in addition to the word ‘SAFETY’, of the figure ‘1’ followed by the letters ‘ST’. This is relevant to an assessment of the distinctiveness of the mark applied for, since figures, letters and their combinations are, per se, distinctive elements of a mark as long as they do not describe the goods concerned.
15 According to the applicant, the element ‘1ST’ in the mark applied for is not commonly used in trade and is not, as a general rule, understood by consumers with the result that the relevant public needs to make an intellectual effort in order to perceive that element as a synonym for the word ‘first’, in particular in combination with the word ‘SAFETY’. Moreover, the mark ‘SAFETY 1ST’ looks like a fanciful street name or address, the consequence of which is that the relevant public will certainly not perceive the mark applied for as meaning ‘safety first’.
16 The element ‘1ST’ contains no indication as to the goods covered by the application for registration. Thus, the two elements ‘1’ and ‘ST’ constitute in themselves a sufficient ground for confirming that the mark sought is registrable.
17 That consideration is not called into question by the combination of the above elements with the word ‘SAFETY’. Taken as a whole, the mark ‘SAFETY 1ST’ does not directly or immediately convey any laudatory or promotional message. The relevant public first has to analyse the mark applied for further and to translate the sign SAFETY 1ST into ‘safety first’ in order to be able to read and understand the mark as meaning what the Board of Appeal found it to mean, namely as an advertising message.
18 The public does not, in general, think about the semantic content of a mark where that content is not at first sight obvious. The public perceives the mark applied for, on account of its fanciful content, as an indication of the commercial origin of the goods it covers, with the result that the mark applied for enables those goods to be distinguished from those of other manufacturers, for example from those designated by marks consisting of the word ‘safety’ in conjunction with other elements. The public does not therefore think of any semantic or laudatory content of the mark applied for.
19 The irregular and fanciful modification of an expression relating to quality, which is conveyed by the mark SAFETY 1ST, thus confers on it a distinctive character which, even if it is low, is sufficient to allow its registration. The distinctive character of the mark applied for must, according to the applicant, be assessed on the basis of the overall impression produced by that mark. In that regard, the element ‘1ST’, in its original and inherent sense of a figure, cannot be neglected. Within the mark applied for that element is certainly equally as important as the element ‘SAFETY’, if not more important.
20 The fact that the United States Patents and Trademarks Office permitted registration of the mark should also suffice to confirm the distinctive character of the mark applied for within the meaning of Regulation No 40/94.
21 Lastly, the applicant states that its pleadings before the examiner on 28 August 2003 and before the Board of Appeal on 20 September 2004 are an integral part of the grounds of its action before the Court, in so far as they substantiate its statements concerning the distinctiveness of the mark applied for.
22 OHIM rebuts the applicant’s arguments.
Findings of the Court
The applicant’s reference to its pleadings before OHIM
23 According to the case-law, in order to ensure legal certainty and the proper administration of justice, for an action to be admissible, the basic legal and factual particulars on which the action is based must be indicated coherently and intelligibly in the application itself, even if only in summary form (see Case T‑209/01 Honeywell v Commission [2005] ECR II-5527, paragraph 56, and the case-law cited).
24 Whilst the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential submissions in law, which must appear in the application (order of the Court of First Instance in Case T-154/98 Asia Motor France and Others v Commission [1999] ECR II-1703, paragraph 49, and Honeywell v Commission, paragraph 23 above, paragraph 57).
25 Moreover, it is not for the Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, since the annexes have a purely evidential and instrumental function (see Honeywell v Commission, paragraph 23 above, paragraph 57, and the case-law cited).
26 In the present case, the applicant refers generally, in its application, to the arguments put forward in its pleadings before OHIM, which it annexed to its application and which also appear in the file relating to the proceedings before the Board of Appeal, forwarded to the Court pursuant to Article 133(3) of the Rules of Procedure of the Court of First Instance. In accordance with the abovementioned case-law, the Court is not required to find in those pleadings the arguments to which the applicant might be referring or to examine them, since those arguments are inadmissible (see, to that effect, Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraph 21).
Substance
27 Under Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ are not to be registered. 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’.
28 According to the case-law, the signs referred to in Article 7(1)(b) of Regulation No 40/94 are signs which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (Case T-79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II-705, paragraph 26, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 37). That is true, in particular, for signs which are commonly used in the marketing of the goods or services concerned (Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 65).
29 Registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (LIVE RICHLY, paragraph 28 above, paragraph 66; see also, by analogy, Case C-517/99 Merz & Krell [2001] ECR I-6959, paragraph 40).
30 A sign which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is only distinctive, for the purposes of Article 7(1)(b) of Regulation No 40/94, however, if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (Case T-130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II-5179, paragraph 20; Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235, paragraph 21; Case T-216/02 Fieldturf v OHIM (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS) [2004] ECR II‑1023, paragraph 25; and LIVE RICHLY, paragraph 28 above, paragraph 66).
31 Furthermore, the distinctiveness of a mark must be assessed, first, in relation to the goods or services for which registration has been requested and, second, in relation to the perception which the relevant public has of it (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS, paragraph 30 above, paragraph 26, and LIVE RICHLY, paragraph 28 above, paragraph 67).
32 In the present case, it must be pointed out, as the Board of Appeal did, that the goods covered by the mark applied for are aimed at children or, at the very least, tend to be used by them. Therefore, the relevant public consists of the parents, family, or friends of children, who will buy those goods for the use of children. In other words, it is the general public, namely average consumers, who, according to the case-law (see LIVE RICHLY, paragraph 28 above, paragraph 69, and the case-law cited), are deemed to be reasonably well-informed and reasonably observant and circumspect.
33 Furthermore, in view of the fact that ‘safety’ and ‘first’ or ‘1st’ are English words, the Board of Appeal was right to decide to take account of the perception which the average English-speaking consumer will have of the mark applied for. If it is established that the mark applied for is not perceived, by such a consumer, as an indication of the commercial origin of the goods in question, that is sufficient for registration of the mark applied for to be refused.
34 It must also be pointed out that the Board of Appeal was right, in the contested decision, to approve the examiner’s finding, substantiated by the reference to a dictionary, that the expression ‘safety first’ is well-known and frequently used in English to indicate that safety is a priority. The applicant does not dispute that meaning of the expression in question.
35 Considerations related to safety are particularly relevant in respect of goods intended for use for or by children, given the increased risk of accidents and injuries to which they are exposed. Consequently, having regard to the abovementioned meaning of the expression ‘safety first’ in English, it must be considered that the average English-speaking consumer will perceive that expression, where it is used to designate the goods covered by the mark applied for, as information relating to a quality or characteristic of the goods, which indicates that safety considerations played a dominant role in the design and manufacture of those goods and, therefore, as an advertising slogan. That consumer will accordingly not automatically perceive the expression as an indication of the commercial origin of the goods in question. It follows that, in respect of those goods, the expression is, for the relevant English-speaking public, devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94.
36 The applicant’s arguments do not call into question that finding concerning the sign SAFETY FIRST, but it seeks to make a distinction in the case of the mark applied for on the ground that, instead of ‘first’, it has the element ‘1st’, which, as it consists of the combination of a number and two letters, is claimed to have an intrinsic distinctive character.
37 In that regard, it is necessary to bear in mind, first, the case-law according to which any distinctive character of a compound mark may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public. It is not inconsistent with a successive examination of the different composite elements of the mark in question to consider that mark as a whole (see Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraphs 29 and 31, and the case-law cited).
38 Secondly, it must be pointed out that in English ‘1st’ is not an arbitrary juxtaposition of a number and two letters, but is another way of writing the ordinal number ‘first’, which is well-known and commonly used in English. It is true that ‘1st’ is used more at the beginning of numbered lists or headings, while in sentences it is more common to write ‘first’. The fact remains that average English-speaking consumers who are confronted with ‘1st’ in a phrase will immediately and without the need for any particular intellectual effort read it as ‘first’, even if they take the view that such use is unusual. Consequently, contrary to the applicant’s claim, such consumers will not have to carry out any particular analysis in order to read the mark applied for in that way.
39 Therefore, such consumers will immediately perceive the mark applied for, taken as a whole, in the same way as ‘safety first’, namely as an indication relating to the characteristics of the goods concerned, or indeed as an advertising slogan, and not as an indication of the commercial origin of those goods.
40 Advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier. Therefore, the use, in the mark applied for, of ‘1st’ instead of ‘first’, far from precluding any possibility of that sign’s being perceived as an advertising slogan, makes such a perception more likely.
41 The applicant’s argument that the public will perceive the sign SAFETY 1ST as a fanciful address or street name rather than as the expression ‘safety first’ must also be rejected.
42 In English, postal addresses contain numbers (1, 2, 3, etc.) and not ordinal numbers (1st, 2nd, 3rd, etc.). Moreover, the numbers are placed at the beginning of the address, before the street name concerned, and not at the end. Thus, an address in an imaginary street called ‘Safety’ would be written ‘1 Safety’ and not ‘Safety 1st’. Therefore, contrary to the applicant’s submission, the relevant English-speaking public, confronted with the mark applied for, will not think of an address.
43 Likewise, the mark applied for will not be perceived by that public as a street name, whether imaginary or not. It is true that in some English-speaking countries, in particular the United States of America, it is not uncommon to designate streets by ordinal numbers rather than by names (for example ‘5th Avenue’). Nevertheless, in that case, the ordinal number is at the beginning rather than at the end and, what is more, it is followed by a word such as ‘street’, ‘road’ or ‘avenue’ and not by a word such as ‘safety’, which has no connection with a ‘street’.
44 It follows, as the Board of Appeal correctly found, that the relevant English-speaking public’s overall perception of the mark applied for will not be as an indication of the commercial origin of the goods which that mark covers; therefore, for the public in question, that mark is devoid of any distinctive character in respect of those goods. The plea in law alleging infringement of Article 7(1)(b) of Regulation No 40/94 must therefore be rejected.
45 Lastly, as regards the applicant’s argument to the effect that the sign in question has been registered as a trade mark in the United States of America, that argument must be rejected as irrelevant as that registration was effected on the basis of different legislation. It suffices to point out, in that regard, that 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. Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone (Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 70; and Case T-15/05 De Waele v OHIM (Shape of a sausage) [2006] ECR II‑1511, paragraph 44).
46 It follows from all of the above that the present action is unfounded and must be dismissed.
Costs
47 Under Article 87(2) of the Rules of Procedure, 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 incurred by OHIM, 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 Dorel Juvenile Group, Inc. to pay the costs.
Vilaras | Martins Ribeiro | Jürimäe |
Delivered in open court in Luxembourg on 24 January 2008.