Case T-471/07

Wella AG

v

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

(Community trade mark – International registration − Request for territorial extension of protection − Word mark TAME IT – Absolute ground for refusal − Lack of distinctive character − Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Application for registration of a sign in respect of all goods falling within a single category

(Council Regulation No 40/94, Art. 7(1)(b))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character

(Council Regulation No 40/94, Art. 7(1)(b))

3.      Community trade mark – Registration procedure – Withdrawal, restriction and amendment of the trade mark application – Restriction of the list of goods and services

(Council Regulation No 40/94, Arts 44(1) and 149(1))

1.      Where registration of a Community trade mark or the protection in the European Community of an international registration has been sought in respect of all goods falling within a category without distinguishing between those goods, the fact that the mark in question is devoid of any distinctive character solely in relation to certain goods falling within that category does not preclude a finding that the mark in question lacks distinctive character in relation to all the goods in that category.

(see para. 18)

2.      The word sign TAME IT, the registration of which is sought in respect of ‘essential oils, cosmetics, hair lotions’ in Class 3 of the Nice Agreement is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark.

In relation to hair lotions, hair cosmetics and essential oils which may be used on hair, the mark applied for will be perceived by an average English-speaking consumer as an order or invitation to use those products in order to soften, control or make hair tractable. The semantic content of that mark thus indicates to the relevant consumer a positive characteristic of those products, relating to their market value, inasmuch as the softening or controlling of hair is an important function which the consumer seeks when he uses them.

Consequently, the mark TAME IT, in relation to hair lotions, hair cosmetics and essential oils which may be used on hair, and in so far as it incites the consumer to use those products and/or informs him about the desired effect of using them, will immediately be perceived by the relevant public as an advertising message rather than as an indication of the commercial origin of those products.

(see paras 25, 28)

3.      Under Article 44(1) of Regulation No 40/94 on the Community trade mark, the applicant for the mark may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein. Thus, the power to restrict the list of goods or services is vested solely in the applicant for the Community trade mark, who may, at any time, apply to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) for that purpose. Pursuant to Article 149(1) of Regulation No 40/94, the same must be true in the context of an application for a European Community designation of an international registration.

(see para. 29)