JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
6 March 2007 (*)
(Community trade mark – Application for the Community word mark GOLF USA – Absolute grounds for refusal – Descriptive character – Lack of distinctive character)
In Case T‑230/05,
Golf USA, Inc., established in Oklahoma City, Oklahoma (United States), represented by A. de Bosch Kemper-de Hilster, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and G. Schneider, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 25 April 2005 (Case R 823/2004-2) refusing the application for registration of the word mark GOLF USA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of J. Pirrung, President, A.W.H. Meij and I. Pelikánová, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court of First Instance on 24 June 2005,
having regard to the response lodged at the Court Registry on 15 September 2005,
further to the hearing on 5 September 2006,
gives the following
Judgment
Background to the dispute
1 On 27 February 2003, the applicant filed Community trade mark application No 3073715 at the Office for Harmonisation in the Internal Market (Trade Marks and Designs). The application was for the registration of the word mark GOLF USA. The goods in respect of which registration was sought fall within Classes 25, 28 and 35 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 the classes, to the following description:
– Class 25: ‘Sports, leisure shoes, outer clothes, trousers, pull-overs, sweaters, t-shirts, vests, three-quarter coats, jackets, headgear, caps, hats, visors’;
– Class 28: ‘Sport articles, including golf clubs, golf balls, golf bags and golf gloves’;
– Class 35: ‘Commercial retailing services of sport articles, namely golf equipment’.
2 After informing the applicant of her unfavourable opinion by letter of 20 February 2004, and after receiving the applicant’s observations on 14 April 2004, the examiner refused the registration in respect of the three classes of goods and services, by decision of 13 August 2004. She decided that, for each of the three classes, the mark applied for had to be refused on the basis of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), and that the applicant could not validly rely on Article 7(3) of that regulation.
3 The examiner found, primarily, that the combination of the descriptive terms ‘golf’ and ‘USA’ itself produces a composite descriptive term, ‘golf USA’. In addition, that composite term does not present any ‘unusual linguistic structure’ allowing a parallel to be drawn with the approach adopted in Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I-6251. Equally, according to the examiner, the combination ‘golf USA’ brought to mind an obvious link between golf and the United States. Furthermore, she found that the applicant had not furnished evidence to the requisite legal standard of distinctive character acquired through use for the purposes of Article 7(3) of Regulation No 40/94.
4 On 14 September 2004 the applicant filed a notice of appeal against the examiner’s decision.
5 By decision of 25 April 2005 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and upheld the examiner’s decision.
6 In relation to the application of Article 7(1)(c) of Regulation No 40/94 to the goods and services in Classes 28 and 35, the Board of Appeal observed, first of all, that from the perspective of the relevant consumers, that is golf players, the descriptive message contained in the mark applied for overrode its ability to indicate commercial origin. However, it considered that that was not the case for goods in Class 25, which were marketed to the public in the broad sense, and took the view, as a result, that the examiner’s objection based on that point was not founded with regard to those goods.
7 Secondly, the Board of Appeal applied, by analogy, the decision in EUROLINE (decision of the First Board of Appeal of 5 September 2000 in Case R 741/1999‑1), in which it was stated that the general interest in maintaining current terms in the public domain precluded the ‘EURO’ element combined with a non-distinctive element from being registered as a trade mark. According to the Board of Appeal, that reasoning can be applied to the ‘USA’ element in the present case.
8 Thirdly, the Board considered that the exclusive rights conferred by a Community trade mark under Article 9(1) of Regulation No 40/94 was such as to limit in an unjustifiable way the right of the applicant’s competitors to describe their own goods by using the mark applied for or similar terms.
9 Fourthly, the Board of Appeal did not accept that there was anything fanciful or arbitrary about the term ‘golf USA’, and therefore rejected the applicant’s argument based on the case‑law resulting from the judgment in Procter & Gamble, cited in paragraph 3 above.
10 In respect of the application of Article 7(1)(b) of Regulation No 40/94 to the goods and services in the three classes covered by the application for registration, the Board of Appeal based the contested decision on three arguments.
11 First, it stated that it was clear from its reasoning in relation to the application of Article 7(1)(c) of Regulation No 40/94, set out in paragraphs 6 to 9 above, that the mark applied for was devoid of any distinctive character, since a descriptive trade mark lacks the ability to be distinctive.
12 Second, for the goods and services in Classes 28 and 35, it took the view that the geographical origin of the goods appeared plainly and directly to the relevant consumers, that is golf players. That would not be the case if, on the other hand, the message given by the mark required a particular intellectual effort.
13 Third, it considered that the registration should also have been refused for the goods in Class 25 since the mark applied for was inherently non-distinctive.
14 Finally, the Board of Appeal rejected the applicant’s arguments concerning the distinctive character acquired through use, the registration by OHIM of similar marks, and the registration of the mark applied for as a national mark in several countries.
Forms of order sought
15 The applicant claims that the Court of First Instance should:
– annul the contested decision;
– order OHIM to pay the costs.
16 OHIM contends that the Court of First Instance should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 The applicant puts forward five pleas. The first four allege infringement of Article 7(1)(c) of Regulation No 40/94 in so far as OHIM erred in finding the mark applied for to be descriptive; infringement of Article 7(1)(b) of Regulation No 40/94 in so far as OHIM disregarded the distinctive character of the mark applied for; infringement of Article 14 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (‘the ECHR’), signed in Rome on 4 November 1950, by reason of the fact that OHIM treated the applicant in a discriminatory way in registering similar marks but refusing to register the mark applied for; and infringement of Article 7(3) of Regulation No 40/94 in so far as OHIM disregarded the distinctive character acquired through use.
18 The fifth plea alleges infringement of Article 7(1)(b) and (c) of Regulation No 40/94 in so far as OHIM disregarded the fact that there was no need to keep the mark applied for available. The Court considers that that plea relates, in substance, to the application of Article 7(1)(c). Therefore, the arguments relating to that plea will be examined in the context of the first plea, alleging infringement of that latter provision.
1. The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
19 The applicant raises four arguments in support of its first plea.
20 First, use of the separate terms ‘golf’ and ‘USA’ would remain in the public domain so that there is no need to keep the composite term ‘golf USA’ available.
21 Second, the term ‘golf’ is allusive, not descriptive. It is much too general to be interpreted as describing the intended use of the goods and services in question. That descriptive nature becomes apparent for example in the case of a composite term such as ‘golf clubs’, ‘golf gear’ or ‘golf clothes’. Conversely, in the instant case, the word ‘golf’ itself has a broader meaning connected to the whole atmosphere of golfing.
22 Third, even if the term ‘USA’ could be seen as a badge of geographical origin, Article 7(1)(c) of Regulation No 40/94 would not apply to the present case as the mark ‘GOLF USA’ does not consist exclusively of descriptive indications such as those set out in Article 7(1)(c).
23 Fourth, even if the mark GOLF USA as a whole were seen as a badge of geographical origin, Article 7(1)(c) of Regulation No 40/94 would in any event not apply in this case as the consumers concerned would not think that products and services marketed under the ‘GOLF USA’ trade mark were a creation of the US golf world, whatever that might be, or that they were solely used in that context. On that latter point, the applicant refers to the definition of ‘geographical origin’ laid down in paragraph 8.4.1 of OHIM’s Examination Guidelines of 26 March 1996 (Decision EX /96/2, of 26 March 1996, OJ OHIM 9/96, p. 1347).
24 OHIM disputes the applicant’s contention by stressing, first, the interest in maintaining the descriptive terms in the public domain since the applicant’s competitors might need to employ those exact terms to describe their own goods or services. OHIM then points out that the combination of a non-distinctive element with a geographical indication is generally not to be registered as a trade mark. Finally, OHIM considers that the relationship between the mark and the goods and services covered by the application is, in the eyes of the consumers concerned, golfers in this case, sufficiently direct and specific to establish the descriptive character of the mark.
Findings of the Court
25 It must be pointed out, first of all, that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination (Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 45; Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 39; and Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 59). Furthermore, the various grounds for refusal must be interpreted in the light of the general interest underlying each of them. The general interest taken into consideration when examining each of those grounds for refusal may, or even must, reflect different considerations, according to the ground for refusal in question (Henkel v OHIM, paragraphs 45 to 46; Case C‑329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraph 25; and BioID v OHIM, paragraph 59).
26 Article 7(1)(c) of Regulation No 40/94 reflects the general interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31, and Case T‑219/00 Ellos v OHIM (ELLOS) [2002] ECR II‑753, paragraph 27).
27 The descriptive indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage from the point of view of the target public 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 (Procter & Gamble v OHIM, cited in paragraph 3 above, paragraph 39). A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the target public (Case T‑356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II‑1963, paragraph 25).
28 A word mark is regarded as designating the goods and services for which registration is sought where, in the eyes of the target public, there is a sufficiently direct and specific relationship between that mark and the goods and services for which registration is sought (CARCARD, cited in paragraph 27 above, paragraph 28, and Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 40, confirmed on appeal by Order of the Court of Justice in Case C‑150/02 P Streamserve v OHIM [2004] ECR I‑1461).
29 Next, it must be added that a mark must be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 where the indications composing the mark may be used to designate the goods or services in respect of which registration is sought. It is thus not necessary, for the application of that provision, that the signs and indications composing the mark applied for actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the mark is sought (OHIM v Wrigley, cited in paragraph 26 above, paragraph 32, and Joined Cases T-367/02 to T-369/02 Wieland-Werke v OHIM(SnTEM, SnPUR and SnMIX) [2005] ECR II‑47, paragraph 40).
30 Finally, although the mark applied for must be rejected on the basis of Article 7(1)(c) of Regulation No 40/94 where it consists exclusively of descriptive indications, it is not necessary, for the application of that provision, that those indications be exclusively descriptive themselves. In other words, an indication must be regarded as descriptive if at least one of its possible meanings may serve to designate the goods or services concerned (OHIM v Wrigley, cited in paragraph 26 above, paragraph 32).
31 It is in the light of those considerations that the applicant’s arguments need to be assessed.
32 As regards, first, the argument alleging that registration of the mark applied for has no bearing on the use of the separate terms ‘golf’ and ‘USA’, which would remain in the public domain, and that there is thus no need to preserve the availability of the composite term ‘golf USA’, it has been pointed out above that Article 7(1)(c) of Regulation No 40/94 aims to prevent situations in which an undertaking monopolises the use of a descriptive term to the detriment of other undertakings, including its competitors, whose choice of available vocabulary for describing their own goods is thereby reduced.
33 As pointed out by the Board of Appeal in paragraph 17 of the contested decision, the exclusive right conferred by a Community trade mark, outlined by Article 9(1) of Regulation No 40/94, provides its proprietor with the legal means to prevent not only the use by unauthorised third parties of the mark as registered, but also any combination of terms likely to bring about a likelihood of confusion with the protected mark. The scope of the exclusive right of the proprietor of the mark therefore extends beyond the use of the mark in the narrow sense, since it also encompasses terms that entail a likelihood of confusion with that mark. In the present case, it appears at least possible, if not likely, in the case of a registration of the mark applied for, that prudent enterprises which are active in the golf field will choose to avoid using a combination of the terms ‘golf’ and ‘USA’ in order to avoid any risk of making themselves liable towards the proprietor of the GOLF USA trade mark. The argument that the availability of each of the components of the mark applied for is not affected by the registration of that latter mark is therefore unfounded.
34 It follows that the Board of Appeal rightly rejected the applicant’s first argument by relying on the exclusive right conferred by Article 9(1) of Regulation No 40/94.
35 As regards the applicant’s second and third arguments that the term ‘golf’ is too general to be able to be interpreted as describing the intended use of the goods in question and, therefore, that the mark applied for is not made up exclusively of descriptive signs, it has been pointed out (paragraph 28 above) that the descriptive character of a term is to be assessed in the light of the existence of a sufficiently direct and specific link between the mark applied for and the goods or services concerned in the eyes of the consumer.
36 In the present case, given that the descriptive character of the term ‘USA’ is not contested in the context of this plea, it needs to be investigated whether such a link exists between the term ‘golf’ and the goods and services concerned, which, in the present case, are those in Classes 28 and 35, since the Board of Appeal did not find that such a link exists for the goods covered by Class 25. In Class 28, the goods concerned are golf equipment and, in Class 35, the services concerned are the retail sale of that equipment. From the point of view of the consumers of those goods and services, namely golf players, there is, therefore, a direct link between the component ‘golf’ of the mark applied for and the goods and services for which registration of that mark was sought. It follows that the term ‘golf’ is descriptive in relation to the goods and services at issue, which cannot be called into question by the allegedly general character of the term ‘golf’. Consequently, the applicant’s second and third arguments must be rejected.
37 As regards the applicant’s final argument raised in the context of this plea, it is sufficient to note that the applicant merely alleges that the consumers concerned have a certain understanding of the sign in dispute, without substantiating that claim in any way whatsoever. Therefore, the argument is not capable of casting doubt on the finding made by the Board of Appeal, in paragraph 14 of the contested decision, that the link between the indication given by the sign and the nature of the goods and services concerned in Classes 28 and 35 respectively is sufficiently direct for the reference consumer to perceive the descriptive message contained in the sign and for that message to override the sign’s ability to indicate the commercial origin of the goods and services. In addition, it seems that the reference made by the applicant to the term ‘US golf world’, which, on its own admission, is vague, stems from a misinterpretation of the notion of ‘indications which may serve, in trade, to designate the … geographical origin’ of the goods or of the rendering of the service within the meaning of Article 7(1)(c) of Regulation No 40/94. That notion implies, in the context of the present case, that the consumer concerned might understand the sign GOLF USA as an indication that the goods and services at issue come from the United States. The applicant has not contested the existence of that risk.
38 It follows that the final argument raised by the applicant in the context of its first plea must also be rejected.
39 It must therefore be found that the Board of Appeal did not err in finding, in relation to the goods covered by Class 28 and the services covered by Class 35, that each of the two components of the mark applied for is descriptive and in concluding that that mark thus consisted exclusively of descriptive indications for the purposes of Article 7(1)(c) of Regulation No 40/94.
40 In the light of the above, the first plea must be rejected.
2. The second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
41 First, the applicant takes the view that the Board of Appeal was wrong to conclude that the mark applied for was devoid of any distinctive character. It maintains that the mark applied for does contain the minimum degree of distinctive character required since it has a structure that is incorrect and even contrary to the rules of the English language, which makes it surprising, unusual and fanciful. As a result, the composite term ‘golf USA’ represents more than the sum of its parts and is thus sufficiently distinctive.
42 Second, the applicant submits that the examiner failed to fulfil her duty to provide reasons in her letter of 20 February 2004, by which she issued an unfavourable opinion as to registration of the mark applied for.
43 According to OHIM, it follows from its arguments in relation to Article 7(1)(c) of Regulation No 40/94 that the mark applied for is descriptive and not distinctive. OHIM adopts the argument of the Board of Appeal that, in the light of the links existing between golf and the United States, the relevant consumers will see in the mark applied for an obvious direct link between golf and that country, and not a badge of commercial origin. OHIM adds that the mark applied for could none the less have contained a sufficient degree of distinctiveness if it had displayed unusual syntax or a particular stylistic technique, such as a play on words or a rhyme. However, this was not the case here.
Findings of the Court
The applicant’s first argument, alleging that the mark applied for has sufficiently distinctive character
44 In the context of the first argument raised in support of the second plea, a distinction needs to be made between, first, the goods and services covered by Classes 28 and 35 and, second, the goods covered by Class 25.
– The goods and services covered by Classes 28 and 35
45 As noted above, the mark applied for is descriptive in respect of Classes 28 and 35. There is, to a certain extent, an overlap between the respective scope of each of the grounds set out in Article 7(1)(b) and (c) of Regulation No 40/94 (see, by analogy, Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 18, and Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 67). In particular, it is apparent from the case‑law that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) of that regulation (see, by analogy, Campina Melkunie, paragraph 19, and Koninklijke KPN Nederland, paragraph 86). By reason of its descriptiveness the mark applied for is therefore necessarily devoid of any distinctive character in respect of Classes 28 and 35 and it is not necessary to examine that point individually.
46 Consequently, the applicant’s first argument must be rejected in so far as it relates to the distinctive character of the mark applied for in respect of the goods and services in Classes 28 and 35.
– The goods covered by Class 25
47 It is apparent from the case‑law that the distinctiveness of a complex mark may be assessed, in part, for each of its terms or elements, taken separately, but must, in any event, be based on the overall perception of that mark by the relevant public. The mere fact that each of the elements of a mark, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character (SAT.1 v OHIM, cited in paragraph 25 above, paragraph 28, and BioID v OHIM, cited in paragraph 25 above, paragraph 29).
48 In addition, the distinctiveness of a mark must be assessed, first, in relation to the goods or services in respect of which registration has been applied for and, second, in relation to the perception of the relevant public (BioID v OHIM, cited in paragraph 25 above, paragraph 48).
49 In the present case, first, the ‘golf’ component of the mark applied for may be used to designate the use of the goods in question. Since the goods in Class 25 do not have a specific use they may also be used for playing golf even though they are not explicitly intended for that purpose. Second, the ‘USA’ component of the mark applied for may be used to designate the geographical origin of the goods or of the undertaking which produces or markets them. The components of the mark applied for are thus descriptive, respectively, of a possible use and of the origin of the goods in question. That finding is valid for the whole of the Community since it is not necessary to have a command of the English language to be able to understand the meaning of those terms. As regards the combination of the two terms, that combination does not contain, in relation to the components taken separately, any additional element capable of giving it distinctive character.
50 In particular, although the term ‘golf USA’ does not conform to linguistic rules, in that it cannot be used, as such, in a correct English sentence, it is nevertheless very close and, phonetically speaking, it is identical to certain expressions which are commonly used to indicate that something originates from the United States. Thus, as regards golf and goods which, although not specifically aimed at that sport, are likely to be used for playing it, expressions such as ‘golf/USA’ or ‘golf (USA)’ could be used. Seen from that perspective, the present case is one of mere juxtaposition or lack of a link between the terms, rather than a linguistic ‘error’ strictly speaking. Such a minimal and imperceptible phonetic difference cannot have any influence on the perception created by the two terms which make up the mark applied for and is thus not likely to obscure the message clearly and directly conveyed by those terms.
51 It follows that the sign GOLF USA remains devoid of any distinctive character. Consequently, the applicant’s first argument must be rejected.
The applicant’s second argument, alleging a lack of reasoning in the letter of 20 February 2004
52 As regards the argument based on the lack of reasoning in the examiner’s letter of 20 February 2004 expressing her initial unfavourable opinion as to registration of the mark applied for, it is sufficient to find that that argument is manifestly ineffective since it relates to a purely preparatory measure during the proceedings before OHIM. It is apparent from Article 73 and Article 38(3) of Regulation No 40/94 that only the examiner’s final decision (in this case the decision of 13 August 2004) constitutes a real decision which is subject to the duty to give reasons.
53 Therefore, the applicant’s second argument must be rejected.
54 As the two arguments raised by the applicant in support of the second plea have been rejected, the second plea must be dismissed in its entirety.
3. The third plea, alleging infringement of Article 14 of the ECHR
Arguments of the parties
55 The applicant maintains, first, that OHIM has already registered several marks which are similar and also comprise the word ‘golf’ placed before or after the name of a town or country. The refusal to register the mark applied for despite OHIM’s practice to the contrary is arbitrary and therefore constitutes an infringement of Article 14 of the ECHR, which prohibits any discrimination. Second, the applicant points out that the mark applied for has already been registered as a national mark in four Member States and in Benelux.
56 OHIM submits that the legality of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 40/94 and not on the basis of a previous practice of those boards in taking decisions. Furthermore, it states that registration of a sign as a national mark may have indicative value in the context of the examination which it carries out for the purposes of Community registration, but that that cannot relieve OHIM of its obligation to carry out its own assessment in the light of Regulation No 40/94. In addition, six of the ten marks referred to by the applicant were applied for but have not in fact been registered, and the registration of three other marks out of the ten referred to is justified by certain circumstances distinguishing them from the mark at issue in the present case.
Findings of the Court
57 In the light of the arguments raised by the applicant in the context of the plea alleging infringement of Article 14 of the ECHR, the Court considers that the applicant is in fact relying on the general principal of equal treatment, which constitutes a general principal of Community law. Thus, the plea will be examined accordingly.
58 As regards the applicant’s first argument that similar marks have been registered by OHIM, is sufficient to observe that, whilst factual or legal grounds contained in an earlier decision may constitute arguments to support a plea alleging infringement of a provision of Regulation No 40/94, the legality of the decisions of Boards of Appeal must nevertheless be assessed solely on the basis of this regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice (STREAMSERVE, cited in paragraph 28 above, paragraph 66, and Case T‑123/04 Cargo Partner v OHIM (CARGO PARTNER) [2005] ECR II‑3979, paragraph 68).
59 Two hypotheses therefore exist in that regard. If, by accepting, in a previous case, the registrability of a sign as a Community mark, the Board of Appeal correctly applied the relevant provisions of Regulation No 40/94 and, in a later case comparable to the previous one, the Board of Appeal adopted a contrary decision, the Community judicature will be required to annul the latter decision because of infringement of the relevant provisions of Regulation No 40/94. In this first hypothesis, the plea alleging breach of the principle of equal treatment is therefore ineffective (STREAMSERVE, cited above in paragraph 28, paragraph 67; Case T‑323/00 SAT.1 v OHIM (SAT.2) [2002] ECR II‑2839, paragraph 61; and CARGOPARTNER, cited in paragraph 58 above, paragraph 69).
60 On the other hand, if, by accepting, in a previous case, the registrability of a sign as a Community mark, the Board of Appeal erred in law and, in a later case, comparable to the previous one, the Board of Appeal adopted a contrary decision, the first decision cannot be successfully relied on to support an application for the annulment of the latter decision. It is clear from the case-law that observance of the principle of equal treatment must be reconciled with observance of the principle of legality, according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another. In this second hypothesis, the plea alleging breach of the principle of equal treatment is therefore also ineffective (STREAMSERVE, cited in paragraph 28 above, paragraph 67; SAT.2, cited in paragraph 59 above, paragraph 61; and CARGO PARTNER, cited in paragraph 58 above, paragraph 70).
61 The applicant’s first argument must therefore be rejected. In those circumstances, it is no longer necessary to examine whether the earlier registrations of the Community trade marks pleaded by the applicant – most of which are disputed by OHIM – have identical characteristics to the mark applied for, as claimed by the applicant, or different ones, as claimed by OHIM.
62 As regards the second argument, based on the fact that the mark applied for has already been registered as a national mark in several countries, it should be pointed out 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. Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules so that OHIM and, as appropriate, the Community judicature are not bound by a decision given in a Member State that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (STREAMSERVE, cited in paragraph 28 above, paragraph 47).
63 Nevertheless, registrations already made in Member States are a factor which, without being decisive, may be taken into account for the purposes of registering a Community trade mark (Case T-122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II-265, paragraph 61; Case T-24/00 Sunrider v OHIM (VITALITE) [2001] ECR II-449, paragraph 33; and Case T-337/99 Henkel v OHIM (Red and white round tablet) [2001] ECR II-2597, paragraph 58). Those registrations may thus provide analytical support for the assessment of an application for registration of a Community trade mark (Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 52, and Case T‑129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II‑0000, paragraph 33).
64 The Board of Appeal admitted expressly, in paragraph 27 of the contested decision, that national registrations constituted one of the factors to be taken into account when assessing a Community trade mark application. However, as it also rightly found, such registrations cannot be binding on it in circumstances in which it considers that the sign applied for is in conflict with the absolute grounds for refusal laid down in Regulation No 40/94.
65 The applicant’s second argument must therefore be rejected.
66 Since the two arguments raised by the applicant in support of the third plea have been rejected, that plea must be dismissed in its entirety.
4. The fourth plea, alleging infringement of Article 7(3) of Regulation No 40/94
Arguments of the parties
67 The applicant submits that its mark has been used on the European market for over 10 years, which it claims to have proved by submitting a catalogue, advertisements and invoices to OHIM. In addition, the applicant annexes to its application to the Court a list of franchise candidates which all received its brochures and two advertisements published in the December 1995 edition of Golf Digest, which, according to the applicant, is an American magazine distributed world‑wide. The applicant also states that it is willing to provide, on request, copies of all advertisements and corresponding invoices since 1995.
68 OHIM affirms that the applicant manifestly failed to demonstrate that the mark had acquired distinctive character in a substantial part of the Community. In addition, according to OHIM, the documents produced for the first time before the Court of First Instance are inadmissible as evidence.
Findings of the Court
The admissibility of the documents submitted for the first time before the Court
69 As regards, first, the documents challenged by OHIM, it must be pointed out that the list of franchise candidates and the examples of the applicant’s advertisements in the magazine Golf Digest were in fact submitted for the first time before the Court.
70 In that regard, the Court observes that the purpose of the action before it is to review the legality of a decision of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. To admit such evidence is contrary to Article 135(4) of the Rules of Procedure of the Court of First Instance, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (Case T‑128/01 DaimlerChrysler v OHIM(Vehicle grille) [2003] ECR II‑701, paragraph 18, and Case T‑16/02 Audi v OHIM (TDI) [2003] ECR II‑5167, paragraphs 63 to 65).
71 Accordingly, the evidence produced for the first time before the Court is inadmissible, as is the evidence which the applicant offered to adduce.
The evidence of distinctive character acquired through use
72 As regards, second, the question whether the applicant demonstrated, during the proceedings before OHIM, that the mark applied for had become distinctive in consequence of the use which had been made of it, in accordance with Article 7(3) of Regulation No 40/94, the applicant submitted the following documents to OHIM:
– in Annex 4 to the application, the copy of an advertising leaflet for its shop in Waterloo in Belgium, copies of advertisements which appeared in the Belgian edition of the magazine Play Golf in 2000 and 2001 and in Eagle, an internal review of a golf club in Belgium, copies of photographs representing external views of shops bearing different versions of the mark applied for but not stipulating in which country those shops are situated, copies of advertisements which appeared, it seems, in Sweden and Belgium in unidentified media and on unknown dates, and extracts from its web site;
– in Annex 5.1 to the application, copies of monthly reports of sales made by the GOLF USA stores in Antwerp and Waterloo in Belgium between January 1994 and January 2004, and copies of two invoices addressed to the Waterloo store dated 11 December 2002 and 5 September 2003;
– in Annex 5.2 to the application, copies of invoices addressed to the GOLF USA store in Portugal, dated 21 October 1994, 13 January 1995, 31 December 1995 and 15 January 1996, and copies of monthly reports relating to sales made by that store and to amounts due in respect of franchising rights between January 1994 and November 1995;
– in Annex 5.3 to the application, copies of reports of the GOLF USA stores in Sweden concerning sales made by those stores and to amounts due for franchising rights between 1999 and 2003;
– in Annex 5.4 to the application, copies of invoices addressed to the GOLF USA stores in Marbella and Madrid in Spain between April 2003 and April 2004;
– in Annex 6 to the application, extracts from different electronic magazines, available on the internet, which specialise in franchising and list the applicant.
73 However, and contrary to the applicant’s submission in its application, it did not produce, either before OHIM or the Court of First Instance, a European catalogue of its products.
74 In the contested decision the Board of Appeal endorsed the examiner’s opinion in considering that the evidence provided by the applicant did not show in any way that the reference consumers in a substantial part of the European Community saw its sign as a mark, that the words ‘golf USA’ are understood throughout the European Union as descriptive of the goods and services at issue, that the evidence of distinctive character acquired through use therefore had to cover the common market as a whole in order to be able to overcome the objection to registration based on a lack of inherent distinctive character and that the applicant had clearly not satisfied that requirement.
75 To assess whether OHIM committed an error in considering that it had not been established that the mark applied for had become distinctive in consequence of the use which had been made of it, it is thus necessary to refer also to the examiner’s decision since the Board of Appeal endorses her reasoning.
76 The examiner states, in her decision, that since the evidence of use submitted by the applicant relates only to Belgium, Portugal, Spain and Sweden, it does not show that the sign at issue is regarded by the average consumer in a substantial part of the Community as distinctive of the applicant.
77 That analysis, although brief, appears nevertheless to be well founded.
78 It must be found that the evidence of use submitted by the applicant is insufficient to show that the mark applied for has acquired distinctive character.
79 It is clear from the case‑law that the acquisition of a distinctive character as a consequence of the use of a mark requires that at least a significant proportion of the relevant section of the public identifies products or services as originating from a particular undertaking because of the mark (Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II‑1391, paragraph 42; see also, by analogy, Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 52; and Case C‑299/99 Philips [2002] ECR I‑5475, paragraph 61). In addition, the Court of Justice held in Windsurfing Chiemsee (paragraph 49) that, ‘in determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings’. In that regard, it is necessary to take into consideration, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; statements from chambers of commerce and industry or other professional associations and opinion polls (Shape of a beer bottle, paragraph 44; see also, by analogy, Windsurfing Chiemsee, paragraph 51; and Philips, paragraph 60).
80 In examining the documents produced by the applicant (see paragraph 72 above) in the light of that criteria, it is apparent that they are not sufficient to show to the requisite legal standard that, as a result of the mark applied for, a significant proportion of the relevant public identifies the goods and services at issue as originating from the applicant’s undertaking.
81 In particular, first, although the invoices addressed to the GOLF USA stores in the various Member States and the sales reports and franchising rights demonstrate a certain business activity, they do not enable conclusions to be drawn as to the share of the market held by the applicant’s products in the markets concerned.
82 Second, as regards the length of use of the mark, the documents concerning the store in Portugal and the two stores in Spain concern only the periods between January 1994 and January 1996 and the period between April 2003 and April 2004, respectively. Use of the mark applied for over such a limited period of time in only one or two stores cannot lead to the conclusion that a sufficient proportion of the public concerned identifies the goods and services at issue as originating from the applicant’s undertaking.
83 Third, the documents produced do not provide any information in respect of the investments made by the applicant to promote the mark applied for. The few advertisements provided seem at most capable of proving that the mark applied for has been used for advertising, but do not provide any information on the extent to which it has been used to that end and on whether the advertising was carried out over an extended period.
84 Finally, the applicant did not produce any document containing indications of the proportion of the relevant circles which, as a result of the mark applied for, identify the goods and services at issue as originating from its undertaking, such as statements from chambers of commerce and industry or other professional associations and opinion polls.
85 It follows that the Board of Appeal did not err in its assessment that the applicant had not met the requirement of proving that the mark has become distinctive in a substantial part of the Community in consequence of the use which has been made of it.
86 Therefore, the fourth plea must be rejected.
87 It follows from all of the above that the action must be dismissed in its entirety.
Costs
88 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, as applied for by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders the applicant to pay the costs.
Delivered in open court in Luxembourg on 6 March 2007.