Provisional text
JUDGMENT OF THE GENERAL COURT (Second Chamber)
15 September 2017 (*)
(EU trade mark — Invalidity proceedings — EU word mark LOVE TO LOUNGE — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Descriptiveness — Article 7(1)(c) of Regulation No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009 — Examination of the facts by EUIPO of its own motion — Article 76 of Regulation No 207/2009)
In Case T‑305/16,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Kefferpütz and A. Berger, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Primark Holdings, established in Dublin (Ireland), represented by B. Brandreth, Barrister, and G. Hussey, Solicitor,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 March 2016 (Case R 489/2015-2), relating to invalidity proceedings between Lidl Stiftung and Primark Holdings,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 14 June 2016,
having regard to the response of EUIPO lodged at the Court Registry on 30 August 2016,
having regard to the response of the intervener lodged at the Court Registry on 25 August 2016,
further to the hearing on 30 May 2017,
gives the following
Judgment
Background to the dispute
1 On 20 August 2009, the intervener, Primark Holdings, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the word sign LOVE TO LOUNGE.
3 The goods in respect of which registration was sought are in Class 25 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: ‘Clothing, footwear, headgear’.
4 The application was published in Community Trade Marks Bulletin No 37/2009 of 28 September 2009 and the mark was registered on 27 January 2010.
5 On 19 September 2013, the applicant, Lidl Stiftung & Co. KG, filed an application for a declaration that the contested mark was invalid pursuant to Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of that regulation, in respect of all the goods covered by the contested mark.
6 On 2 January 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7 On 27 February 2015, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8 By decision of 9 March 2016 (‘the contested decision’), the Board of Appeal of EUIPO dismissed the appeal. First, it found that the relevant date for the purposes of determining whether the registration of the contested mark should be maintained or declared invalid was 20 August 2009, namely the date on which the application for registration of the contested mark was filed (‘the relevant date’).
9 Next, as regards the relevant public, the Board of Appeal found that the level of attention of that public was normal since the goods in question were goods for mass consumption which were purchased by all kinds of consumers. The Board of Appeal also stated that, since the contested mark is composed of English words, it considered that the public concerned was the public in the Member States in which English is an official language and the public in the Member States in which there is a sufficient knowledge of English, which constitutes a significant part of the relevant public throughout the entire European Union. That said, it confined its assessment of the absolute grounds of invalidity to the public of the Member States in which English is an official language.
10 After examining separately the meaning of each word of which the contested mark consists, the Board of Appeal found that the mark LOVE TO LOUNGE, taken as a whole, meant wholehearted pleasure in lazing around. The Board of Appeal also stated that the word ‘lounge’ could, in addition to being understood as a verb, be understood as a noun, namely a term that constitutes a component of several expressions identifying premises for relaxing.
11 As regards the issue of whether the contested mark was descriptive, the Board of Appeal, in essence, concluded that that mark was not capable of describing the goods covered, either directly or by designating one of their inherent characteristics. It also concluded, after examining the evidence provided by the applicant, that the applicant had not proved that, as at the relevant date, the expression ‘love to lounge’ was used in a descriptive way or perceived by the relevant public in such a way in relation to the contested goods in Class 25.
12 In the light of those findings, the Board of Appeal concluded that the connection between the expression ‘love to lounge’ and the goods concerned was too indeterminate to constitute a ground for invalidity under Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation.
13 As regards the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal found that the contested mark, which contained no clear and direct information in relation to the goods concerned and was sufficiently vague, could not be regarded as being completely devoid of any distinctive character.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision and declare the contested mark invalid;
– order EUIPO and the intervener to pay the costs.
15 EUIPO, supported by the intervener, contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 In support of its action, the applicant relies on four pleas in law, alleging (i) infringement of Article 76 of Regulation No 207/2009, (ii) infringement of Article 75 of Regulation No 207/2009, (iii) infringement of Article 7(1)(c) of Regulation No 207/2009, and (iv) infringement of Article 7(1)(b) of that regulation.
17 EUIPO, supported by the intervener, disputes the applicant’s arguments. EUIPO maintains, furthermore, that the second part of the applicant’s first head of claim, by which the applicant requests that the Court declare the contested mark invalid, is inadmissible, inasmuch as it goes beyond the powers of the Court.
18 Given that this case involves examining whether the Board of Appeal complied with the obligation to state reasons incumbent upon it, the Court considers it appropriate to examine the plea alleging infringement of Article 75 of Regulation No 207/2009 before examining the other pleas.
The second plea, alleging infringement of Article 75 of Regulation No 207/2009
19 The applicant submits that the Board of Appeal infringed its obligation to state reasons when it concluded, in paragraph 71 of the contested decision, with regard to the Internet search results contained in Annexes 3, 4 and 5 to the written pleadings which the applicant had submitted to EUIPO during the administrative proceedings, that the applicant had used ‘doubtful’ Internet search methodology.
20 According to the applicant, the Board of Appeal should have explained in what way the search methodology for finding those sites was ‘doubtful’.
21 EUIPO, supported by the intervener, disputes the applicant’s arguments.
22 It must be borne in mind that Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the Courts of the European Union to exercise their power to review the legality of the decision. It is not, however, necessary for the reasoning to go into all the relevant facts and points of law. The question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (judgments of 29 February 1996, Commission v Council, C‑122/94, EU:C:1996:68, paragraph 29, and of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraph 52).
23 Likewise, the requirement to state reasons must be assessed according to the circumstances of each case, in particular the content of the measure and the nature of the reasons given, which means that it is not always necessary for an express view to be adopted on all the matters put forward or requested by the persons concerned (judgment of 30 March 2000, VBA v Florimex and Others, C‑265/97 P, EU:C:2000:170, paragraph 93; see also, to that effect, judgments of 30 November 2000, Industrie des poudres sphériques v Commission, T‑5/97, EU:T:2000:278, paragraph 199, and of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46).
24 It must be stated first of all that the Board of Appeal only found that the search methodology was ‘doubtful’ as regards certain website extracts in Annex 4 to the applicant’s written pleading dated 16 May 2014. It is clear from paragraph 66 of the contested decision, which begins with the words ‘[w]ith regard to Annex 4’, and from the analysis which goes on up to paragraph 72 that it is only Annex 4 that is involved here. That annex consists of nine screenshots from different websites.
25 Next, it must be stated that, in order to explain in what way the applicant’s online search methodology was doubtful, the Board of Appeal referred to the intervener’s written pleadings. Paragraph 71 of the contested decision actually states that ‘[f]urthermore, as claimed by the [EU trade mark] proprietor, the methodology used in carrying out the relevant searches is rather doubtful’. In paragraph 5 of the intervener’s written pleading of 13 October 2014, which is part of EUIPO’s case file and which was notified to the applicant on 16 October 2014, the intervener reproduced and explained in detail some of the search results in Annex 4 in order to show that they were doubtful.
26 It must also be stated that the Board of Appeal explained, in paragraphs 66 to 70 of the contested decision, as regards the evidence in Annex 4, that that evidence did not make it possible to establish that the contested mark was descriptive, because it dated from a period subsequent to the relevant date.
27 Furthermore, still as regards Annex 4, the Board of Appeal explained in essence, in paragraph 72 of the contested decision, that, ‘[i]n any case’, some of the items of evidence in question did not concern the expression ‘love to lounge’ or were used in forms which were different from that of the mark applied for.
28 Consequently, notwithstanding the ‘doubtful’ online search methodology, the Board of Appeal examined the evidence in question and explained why it took the view that it did not prove that the contested mark was descriptive.
29 In the light of the foregoing, it must be held, contrary to what the applicant claims, that the Board of Appeal did not infringe Article 75 of Regulation No 207/2009, under which decisions of EUIPO must state the reasons on which they are based.
30 Consequently, the second plea must be rejected as unfounded.
The first plea, alleging infringement of Article 76 of Regulation No 207/2009
31 The applicant claims, in essence, that the Board of Appeal infringed Article 76 of Regulation No 207/2009 by incorrectly assessing certain items of evidence.
32 The applicant complains, inter alia, that the Board of Appeal did not draw any conclusions from Annexes 3 and 4. It must be stated that Annex 3 was attached to the applicant’s written pleading dated 19 September 2013 and consists of a screenshot from the website ‘forever21.com’. As regards Annex 4, some of the website extracts in that annex are undated whereas others are dated after the relevant date. According to the applicant, the Board of Appeal erred in finding that Annex 3 did not make it possible to draw any definitive conclusion as to whether the expression ‘love to lounge’ in that annex was descriptive or had distinctive character. The applicant likewise claims that the Board of Appeal erred in finding that it could not draw any conclusions as regards the issue of the descriptiveness of the contested mark because Annex 4 contained website extracts which were undated or bore dates subsequent to the relevant date.
33 The applicant also complains that the Board of Appeal reversed the burden of proof as regards the examination carried out in order to determine whether the expression ‘love to lounge’ in Annex 3 was used as a trade mark or as a descriptive expression. The applicant maintains that, since the intervener had put forward the argument that the expression ‘love to lounge’ on the website ‘forever21.com’ could, if it were aimed at the European market, constitute unlawful use of the contested mark, it was for the intervener to prove that that was the case. In any event, according to the applicant, it should be held that the expression ‘love to lounge’ in Annex 3 is descriptive.
34 EUIPO, supported by the intervener, disputes the applicant’s arguments.
35 Article 76 of Regulation No 207/2009 provides:
‘1. In proceedings before it [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
2. [EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned.’
36 It must be pointed out that it is apparent from paragraphs 63 to 72 of the contested decision that the Board of Appeal took Annexes 3 and 4 into consideration and examined them meticulously. In those paragraphs, the Board of Appeal described those annexes and then examined them in order to assess their relevance with regard to the case before it. Consequently, without prejudice to the examination of the merits of that examination, which will be carried out in the context of the examination of the third plea, it must be held that the Board of Appeal did not infringe Article 76 of Regulation No 207/2009.
37 As regards Annex 3, it must also be stated that the Board of Appeal found, in paragraph 65 of the contested decision, that ‘[i]n any case ...’, it was not possible to determine with certainty if LOVE TO LOUNGE was used as a distinctive or descriptive expression. Consequently, the question as to which party bears the burden of proof is irrelevant in the present case. The Board of Appeal thus carried out its own examination of Annex 3 irrespective of the parties’ arguments. The applicant’s argument in that regard must therefore be rejected as ineffective.
38 It follows that the plea alleging infringement of Article 76 of Regulation No 207/2009 must be rejected as unfounded.
The third plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
39 The applicant claims, in essence, that the contested mark is descriptive, inasmuch as it is an obvious and direct reference to the nature and characteristics of the goods in question. It maintains that the Board of Appeal therefore erred in finding that that mark was not descriptive.
40 The applicant also claims that the Board of Appeal erred in interpreting the evidence. In that regard, it submits that the assessment of whether a mark is descriptive must be carried out on an abstract level. It maintains that, consequently, the Board of Appeal erred in law when it refused, on the basis of an insufficient number of items of evidence, to acknowledge that the contested mark was descriptive.
41 The applicant submits that the Board of Appeal did not, moreover, assess the ability of the expression ‘love to lounge’ to describe the characteristics of the goods in an abstract manner, but unduly limited its assessment to evidence of actual use at the time when the trade mark application was filed. The applicant maintains that the example of descriptive use which it provided in the evidence concerns the expression ‘lounge-loving’, which is in fact a grammatically different combination of the words ‘love’ and ‘lounge’. However, in its view, that grammatically different combination has exactly the same meaning. The applicant submits that it is thus impossible that one is a participle used to describe characteristics of a pyjama, while the other one allegedly does not describe any characteristics of clothing, footwear or headgear and lacks a direct and specific relationship with those goods.
42 EUIPO, supported by the intervener, disputes the applicant’s arguments.
43 It must be borne in mind that Article 52(1) of Regulation No 207/2009 provides that:
‘An [EU] trade mark shall be declared invalid on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings:
(a) where the [EU] trade mark has been registered contrary to the provisions of Article 7 [of Regulation No 207/2009] …’
44 Article 7(1)(c) of Regulation No 207/2009 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’ must not be registered. According to Article 7(2) of that regulation, ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Union’.
45 Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents those signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 21 January 2015, Grundig Multimedia v OHIM (GentleCare), T‑188/14, not published, EU:T:2015:34, paragraph 18 and the case-law cited).
46 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 21 January 2015, GentleCare, T‑188/14, not published, EU:T:2015:34, paragraph 19 and the case-law cited).
47 Whether a mark is descriptive must be assessed, first, in relation to the goods and services in respect of which registration was sought and, secondly, in relation to the perception which the relevant public has of the mark (judgment of 30 September 2015, Ecolab USA v OHIM (GREASECUTTER), T‑610/13, not published, EU:T:2015:737, paragraph 19).
48 It is in the light of those principles that it is necessary to examine, having regard to the assessment set out by the Board of Appeal in the contested decision, the applicant’s arguments alleging infringement of Article 7(1)(c) of Regulation No 207/2009.
49 In the first place, it must be held, as the Board of Appeal found in paragraphs 28 to 33 of the contested decision, that, having regard to the goods in question, which are ‘clothing, footwear, headgear’, the relevant public consists of average consumers, whose level of attention is average. The Board of Appeal was likewise right in finding, in light of the fact that the contested mark consists of English words, that the public by reference to which the absolute grounds of invalidity had to be assessed consisted of at least the public in the Member States in which English is an official language, although it noted that the public in the Member States in which there is a sufficient knowledge of English was also part of the public concerned. The Board of Appeal was correct in finding that the public as thus defined constitutes a significant part of the relevant public throughout the entire European Union. Those findings have not, moreover, been disputed by the parties.
50 In the second place, it is necessary to examine, on the basis of a given meaning of the sign in question, whether, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the combination of elements ‘love to lounge’ and the goods in respect of which registration took place (see, to that effect, judgment of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 42 and the case-law cited).
51 In paragraph 43 of the contested decision, the Board of Appeal found, after examining separately the meaning of each of the words of which the contested mark consists, that the combination of words ‘love to lounge’ meant ‘wholehearted pleasure in lazing around’ in everyday language. That finding, which has not, moreover, been disputed by the parties, must be upheld.
52 Next, the Board of Appeal pointed out that, as at the relevant date, there was not, inherently, any sufficiently direct relationship between the contested mark and the goods in question. That conclusion must be upheld. Contrary to the applicant’s arguments, the contested mark does not obviously and directly refer to the nature and characteristics of the contested goods.
53 It must be borne in mind in that regard that, according to the case-law, the fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. A sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50).
54 In the present case, the contested mark is to be understood simply, as the Board of Appeal maintains, as a vague and evocative message alluding to a particular interest or pleasure in relaxing. It does not, however, designate an easily recognisable property of the contested goods. The meaning of the contested mark does not refer to a characteristic of ‘clothing, footwear, headgear’.
55 Consequently, the contested mark does not constitute a description of any specific and precise characteristic of the goods concerned and it has no immediate descriptive meaning in the context of such goods. In that regard, it must be pointed out that the expression ‘love to lounge’ is not synonymous with the terms ‘loungewear’ or ‘loungers’ meaning, inter alia, clothing suitable for relaxing in or comfortable leisurewear.
56 In the light of those considerations, the Board of Appeal was right in finding that, for the relevant public, the contested mark was not, for the purposes of the case-law cited in paragraph 46 above, without further thought, a description of the goods in question or of one of their characteristics.
57 That finding cannot be called into question by the arguments relating to the evidence which the applicant adduced before EUIPO. That evidence comprises, inter alia, Annexes 3 to 5 to the written pleadings filed by the applicant before EUIPO during the administrative proceedings.
58 It must be pointed out at the outset that, contrary to what the applicant claims, the Board of Appeal did not, in paragraph 76 of the contested decision, base its analysis of the evidence on the fact that the number of website extracts was insufficient. Paragraph 76 of the contested decision refers implicitly to the earlier reasoning that the evidence, in particular that in Annexes 2 to 4, does not show the situation as at the relevant date and does not show the use of the contested mark in an unequivocal descriptive manner. The Board of Appeal merely concludes in parentheses that the documents involved are ‘in any case, extremely limited in number’. Consequently, the applicant’s arguments in that regard must be rejected as unfounded, since they relate to a misreading on its part.
59 With regard to the annexes, it must first be stated that Annex 3 is a one-page screenshot from the website ‘www.forever21.com’, which belongs to the American company Forever 21, Inc. In essence, that screenshot shows the expression ‘love to lounge’ followed by the wording ‘Chill out in comfy-cute loungewear in bright summer hues! Starting at 4$ 80’.
60 The Board of Appeal found, after examining Annex 3, that, in any case, it was not possible to determine with certainty, in the light of that screenshot, if the expression in the screenshot was used as a distinctive or descriptive expression.
61 It must be borne in mind that, in invalidity proceedings, since the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM — Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28). Consequently, contrary to what the applicant has claimed in the context of the first plea, the Board of Appeal did not err in finding, after examining Annex 3, that it could not determine with certainty if what was involved was a descriptive expression or the use of that expression as a trade mark. The Board of Appeal drew the conclusion that that annex did not make it possible to draw any specific conclusions regarding the precise nature of the expression set out in that annex.
62 In that regard, it must be held, as the Board of Appeal found, that Annex 3 does not make it possible to establish that the contested mark is descriptive. The expression ‘love to lounge’ is presented in the screenshot in such a way that it stands out and that expression is considerably larger than the other words. It is written in capital letters. That suggests that it is a trade mark. That impression is reinforced by the price, which is also written in large letters. The relevant public might be led to think that what is involved here concerns the promotion of goods bearing the mark LOVE TO LOUNGE. The fact that ‘Chill out in comfy-cute loungewear in bright summer hues!’ is written in small letters does not necessarily show that the expression ‘love to lounge’ is descriptive given that what is involved might be a line of clothing bearing that trade mark. It follows that it is not possible to determine whether the expression in that screenshot is an expression which has distinctive character or an expression which is descriptive.
63 The applicant’s arguments must therefore be rejected as unfounded.
64 Secondly, as regards Annex 4, it should be noted that that annex contains nine extracts from Internet websites, which are undated or date from December 2013, March 2014 or May 2014.
65 Those extracts contain, inter alia, screenshots of websites which market clothing and use expressions such as ‘love to lounge’ and ‘love to lounge around’, as well as the results of searches made with the help of the ‘Google’ search engine which relate to the expression ‘loungewear’.
66 According to the Board of Appeal, those items of evidence did not make it possible to assess whether the contested mark was descriptive as at the relevant date, because they bore a date subsequent to the filing date and did not contain any indications that made it possible to assess the situation as at that date. That finding must be upheld.
67 It is apparent from the case-law that the only date which is relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue. The fact that the case-law allows material subsequent to that date to be taken into account does not cast doubt on that finding since it is only possible to take such material into account if it relates to the situation on the date of filing of the trade mark application (judgment of 3 June 2009, Frosch Touristik v OHIM — DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraph 19).
68 In the present case, it must first of all be stated that some of the items of evidence date from around five years after the relevant date and others are undated. It is true that the words ‘created: 3 years 1 month ago’ are to be found in a window appearing in one of the Internet website extracts dating from 12 May 2014. However, what those words refer to does not appear to be clear. In any event, even if that extract had been created three years and one month earlier, the fact would remain that it dates from a period subsequent to the relevant date.
69 The Board of Appeal was therefore right in finding that that evidence did not make it possible to establish the situation with regard to the contested mark as at the relevant date. That evidence in no way indicates what the situation was as at the relevant date. In that regard, it must be held that the Board of Appeal did not err in finding that that evidence did not provide any ‘chronological information dating back to the past, namely to the relevant point in time’. The Board of Appeal did in fact examine the evidence in order to ascertain whether that evidence could provide indications regarding the situation as at the relevant date, in accordance with the case-law cited in paragraph 67 above.
70 The Board of Appeal was also right in noting, in paragraph 69 of the contested decision, that the contested goods are products of the fashion industry, which is constantly evolving. That sector changes permanently and new lines and styles appear constantly. A period of around five years is thus sufficiently long for the perception of certain words to change according to new trends and cultural globalisation.
71 In any event, as has already been stated, most of those documents contain the elements ‘loungewear’ or ‘lounger’, which are not synonymous with the expression ‘love to lounge’. Furthermore, as the Board of Appeal states in the contested decision, the element ‘loungewear’ is used, in some documents, as a word group, whereas in others, the terms ‘love’ and ‘lounge’ are differently combined.
72 The applicant’s arguments are therefore unfounded.
73 Thirdly, Annex 5 contains seven extracts from Internet websites, with dates between 2012 and 2014, and one extract from May 2009. As the Board of Appeal states in paragraph 73 of the contested decision, they are intended to show cases in which the expression ‘love to lounge’ is used with the clear meanings of physically sitting or lying in a relaxed way (for example, ‘Spend some time sitting blankly on a chair or taste a city’s atmosphere in relaxing speed’; ‘Love to lounge? Pick the chair you’d like to have in your living room!’; ‘Would love to lounge here with a couple of drinks and friends on a Friday night’; ‘Dogs love to lounge’.
74 It must be held that the Board of Appeal correctly stated, in paragraph 73 of the contested decision, that those extracts used the expression ‘love to lounge’ with the meaning of physically sitting or lying in a relaxed way. Those websites relate to, inter alia, furniture or places that are appropriate for lounging in and not the contested goods. Those items of evidence do not therefore prove that the contested mark is descriptive.
75 Consequently, the applicant’s argument must be rejected as unfounded.
76 In view of the foregoing and of all the evidence produced before EUIPO, it must be held that the contested mark is not descriptive.
77 The third plea must therefore be rejected as unfounded.
The fourth plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
78 According to the applicant, the Board of Appeal erred in finding that the expression ‘love to lounge’ could function as an indication of the commercial origin of the goods in question. The applicant submits that the contested decision does not take into account that the fact that the mark LOVE TO LOUNGE is a slogan could have an impact on how the mark is perceived by the public.
79 The applicant claims that, owing to its general nature, the expression ‘love to lounge’ will, first and foremost, be perceived as a piece of information and not as an indication of the commercial origin of the goods which it covers.
80 EUIPO, supported by the intervener, disputes the applicant’s arguments.
81 It must be borne in mind that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character must not be registered.
82 According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those 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 at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see, to that effect, judgments of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 33, and of 21 January 2011, BSH v OHIM (executive edition), T‑310/08, not published, EU:T:2011:16, paragraph 23).
83 The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of that sign (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited, and of 9 September 2010, OHIM v BORCO-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 32 and the case-law cited).
84 The registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded by virtue of such use (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35 and the case-law cited).
85 As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to those marks criteria which are stricter than those applicable to other types of sign (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36 and the case-law cited, and of 11 December 2012, Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, not published, EU:T:2012:663, paragraph 16 and the case-law cited).
86 However, it is apparent from the case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and that it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited, and of 21 May 2015, Mo Industries v OHIM (Splendid), T‑203/14, not published, EU:T:2015:301, paragraph 18 and the case-law cited).
87 The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (see judgment of 21 May 2015, Splendid, T‑203/14, not published, EU:T:2015:301, paragraph 17 and the case-law cited).
88 Furthermore, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 39 and the case-law cited).
89 A trade mark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see judgments of 11 December 2012, Qualität hat Zukunft, T‑22/12, not published, EU:T:2012:663, paragraph 22 and the case-law cited, and of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24 and the case-law cited; see also, to that effect, order of the President of the Court of 12 June 2014, Delphi Technologies v OHIM, C‑448/13 P, not published, EU:C:2014:1746, paragraph 36).
90 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods. In addition, the mere fact that the semantic content of the word sign applied for does not convey any information about the nature of the goods and services concerned is not sufficient to make that sign distinctive (see judgment of 23 September 2009, France Télécom v OHIM (UNIQUE), T‑396/07, not published, EU:T:2009:353, paragraph 17 and the case-law cited).
91 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 by finding that the contested mark had distinctive character.
92 It must be noted at the outset, as has been stated in paragraph 49 above, that, in the context of the present plea, the relevant public consists of average English-speaking consumers in the European Union and that its level of attention is average.
93 Next, it must be pointed out, as the Board of Appeal found, that the contested mark conveys an abstract message referring to the interest of potential consumers in relaxing. The Board of Appeal was likewise right in noting that the contested mark requires some cognitive effort on the part of the relevant public. It is a syntactically-correct combination of English words, which can be used in a great number of contexts. Consequently, when the contested mark is used in relation to the goods in question, namely clothing, footwear and items of headgear, the relevant public will have to place that mark in a certain context, which requires an intellectual effort.
94 Furthermore, even though that mark is not highly imaginative, it has a certain originality which is likely to be remembered by consumers. In that regard, the Board of Appeal was right in pointing out that the contested mark is not without a certain elegance, given the clever use of only two nouns and a preposition and the repetition of the letter ‘l’, all of which combined lend a degree of euphony to the mark as a whole.
95 The meaning and the originality of the contested mark will be perceived as an incitement to purchase, but do not constitute a mere piece of information as the applicant claims. On the contrary, the contested mark will enable consumers to identify the commercial origin of the goods at issue. Consequently, that mark has inherent distinctive character.
96 The applicant also relies on Case R 1523/2011-4, LET’S GET COMFORTABLE, dealt with by the Fourth Board of Appeal, which it considers to be highly relevant in the present case and which should, in its view, have been followed by the Board of Appeal. In that case, the mark LET’S GET COMFORTABLE was considered to be a laudatory expression which was meaningful and was devoid of any distinctive character in relation to ‘furniture and retail store services relating to furniture’. It is also an expression which is purely laudatory with regard to the goods and services inasmuch as it indicates to the relevant public that those goods and services enable them to be in a comfortable position or to be comfortable.
97 However, unlike the mark LET’S GET COMFORTABLE, the contested mark is not purely laudatory with regard to the goods at issue, because, as has been stated above, the relevant public has to think carefully in order to understand the meaning of the expression ‘love to lounge’ in relation to items of headgear, clothing and footwear. It must therefore be held that the case relied on by the applicant is not relevant in the present case.
98 In view of the foregoing, the present plea must be rejected and the action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility of the second part of the applicant’s first head of claim.
Costs
99 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
100 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber),
hereby:
1. Dismisses the action;
2. Orders Lidl Stiftung & Co. KG to pay the costs.
Delivered in open court in Luxembourg on 15 September 2017.