JUDGMENT OF THE GENERAL COURT (First Chamber)
30 April 2013 (*)
(Community trade mark – International registration designating the European Community – Word mark RELY-ABLE – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 – Ground included for sake of completeness)
In Case T‑640/11,
Boehringer Ingelheim International GmbH, established in Ingelheim am Rhein (Germany), represented by V. von Bomhard, A. Renck and C. Steudtner, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 30 September 2011 (Case R 756/2011-4) concerning the international registration designating the European Community of the word sign RELY-ABLE,
THE GENERAL COURT (First Chamber),
composed of J. Azizi, President, S. Frimodt-Nielsen and M. Kancheva (Rapporteur), Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Court Registry on 16 December 2011,
having regard to the response lodged at the Court Registry on 9 March 2012,
further to the hearing on 4 February 2013,
gives the following
Judgment
Background to the dispute
1 On 27 April 2010, the applicant, Boehringer Ingelheim International GmbH, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) an international registration designating the European Community for the word sign RELY-ABLE.
2 The services in respect of which international registration was obtained are in Classes 38, 41 and 42 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:
– Class 38: ‘Provision of access via the Internet to medical and pharmaceutical information concerning pharmaceutical preparations’;
– Class 41: ‘Publication of printed matter (except for promotion purposes) with the results of clinical trials for pharmaceutical preparations (also in electronic form)’;
– Class 42: ‘Conducting clinical trials for pharmaceutical products’.
3 On 5 August 2010 the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of the international registration. The particulars of the international registration provided for in Article 152(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) were published in Community Trade Marks Bulletin No 145/2010 of 6 August 2010.
4 By decision of 2 February 2011, the examiner refused protection of the mark at issue in the Community for all the services covered by the international registration, on the basis of Article 7(1)(b) and (2) of Regulation No 207/2009.
5 On 4 April 2011 the applicant lodged an appeal against the examiner’s decision at OHIM under Articles 58 to 64 of Regulation No 207/2009.
6 By decision of 30 September 2011 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal. It considered that the word mark RELY-ABLE was not distinctive, on the ground that it could not be perceived and memorised by the relevant consumer as a trade mark and that the sign as a whole would be perceived as nothing more than a promotional message whose aim is to highlight an important positive aspect of the services, namely that they are reliable. In particular, the Board of Appeal expressed a view on how two characteristics of the sign applied for would be perceived by the relevant public: the misspelling and the promotional message. Firstly, the Board of Appeal took the view that the relevant public would directly and unambiguously perceive the sign RELY-ABLE as a deliberate misspelling of the English word ‘reliable’ to make it more ‘catchy’, but would not perceive that spelling as particularly fanciful or arbitrary. Secondly, the Board of Appeal found that the relevant public would directly perceive the message communicated by the sign RELY-ABLE as a whole, as a banal laudatory message relating to an important characteristic of clinical trial services for pharmaceutical products, namely their reliability. The obvious promotional meaning of the sign RELY-ABLE eclipses any impression that the sign could indicate commercial origin. According to the Board of Appeal, misspellings have in fact become a frequent feature of promotional messages.
Forms of order sought by the parties
7 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 In support of its action, the applicant raises a single plea in law, based on infringement of Article 7(1)(b) of Regulation No 207/2009.
10 The applicant’s single plea in law can be broken down, in essence, into two parts, the first part alleging that the Board of Appeal failed to take account of the specialisation of the relevant public and the specificities of the services concerned, and the second part alleging that the Board of Appeal failed to take account of the distinctive features claimed of the sign applied for.
11 OHIM disputes the applicant’s arguments.
12 According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
13 It is settled case‑law that for a trade mark to possess distinctive character within the meaning of that provision, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble v OHIM [2004] ECR I‑5173, paragraph 32; Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 66; and Case C‑398/08 P Audi v OHIM [2010] ECR I‑535, paragraph 33), in order to enable the consumer who acquired the goods 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 (Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 18, and judgment of 11 December 2012 in Case T‑22/12 Fomanu v OHIM (Qualität hat Zukunft), not published in the ECR, paragraph 13). That distinctive character must be assessed, on the one hand, by reference to the goods or services for which registration has been sought and, on the other, by reference to the perception of the relevant public (Procter & Gamble v OHIM, paragraph 33; Eurohypo v OHIM, paragraph 67; and Audi v OHIM, paragraph 34).
14 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicate to the consumer a characteristic of the goods or service which, whilst not specific, represents 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 services (see, to that effect, Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235, paragraph 30 and the case-law cited; judgment of 12 March 2008 in Case T‑128/07 Suez v OHIM (Delivering the essentials of life), not published in the ECR, paragraph 20 and the case-law cited; and of 17 April 2008 in Case T‑294/06 Nordmilch v OHIM (Vitality), not published in the ECR, paragraph 23). In addition, the mere fact that the semantic content of the word mark applied for does not convey any information about the nature of the goods concerned is not sufficient to make that sign distinctive (Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 31, and Vitality, paragraph 23).
15 In the present case, the Court notes first of all that the Board of Appeal considered that the relevant consumer is the English-speaking professional consumer in the European Union who is specialised in the pharmaceutical field and who displays a high level of attention (paragraph 11 of the contested decision), and that the services concerned consist mainly of clinical trials for pharmaceutical products and, to a lesser extent, of information services relating to pharmaceutical preparations (paragraph 13 of the contested decision). Those findings of the Board of Appeal must be upheld; moreover, it is apparent from the documents before the Court that those findings are not contested by the applicant. It must be observed that the applicant specifically criticises the Board of Appeal for failing to take account, in its subsequent assessment of the distinctive character, of the specialisation of the relevant public and of the specificity of the services concerned. Furthermore, nor does the applicant contest the Board of Appeal’s conclusion that the word ‘reliable’ is laudatory in nature or even a promotional message, but complains that the Board of Appeal also applied such a conclusion to the sign RELY-ABLE, which the applicant considers to have distinctive character for the relevant public in respect of the services concerned.
16 In the first part of the single plea in law, alleging that the Board of Appeal failed to take account of the specialisation of the relevant public and of the specificity of the services concerned, the applicant essentially puts forward three complaints.
17 By the first complaint, the applicant claims that marks relating to clinical trials are not perceived aurally through word of mouth but through writing alone, which means that the visual perception prevails over the phonetic perception in the field of clinical trials.
18 In that regard, the Court notes that the Board of Appeal in no way failed to have regard to the importance in the present case of the relevant public’s visual perception of the sign at issue. Thus, it must be observed that, in paragraphs 13 and 14 of the contested decision, the Board of Appeal devoted particular attention to the deliberate misspelling of the English word ‘reliable’, and it must be stated that ‘spelling’ relates to visual perception rather than phonetic perception. Accordingly, the applicant’s claim that visual perception prevails over phonetic perception in the field of clinical trials – even on the assumption that it is well founded – is not capable in the present case of calling in question the assessment of the Board of Appeal, which took due account of the relevant public’s visual perception of the sign at issue in respect of the services concerned.
19 By its second complaint, the applicant submits that the misspelling of the sign RELY-ABLE is perceived as unusual, fanciful and striking by the relevant public – which is specialised and highly attentive – in respect of the services concerned.
20 In that regard, the Court notes that, according to the case‑law, for the purposes of applying Article 7(1)(b) and (c) of Regulation No 207/2009, misspellings are not generally conducive to overcoming refusal of registration stemming from the fact that the content of the sign is immediately comprehensible as laudatory or descriptive (see, to that effect, Case T‑316/03 Münchener Rückversicherungs‑Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II‑1951, paragraph 37; judgment of 16 September 2008 in Case T‑48/07 ratiopharm v OHIM (BioGeneriX), not published in the ECR, paragraph 30; and of 26 November 2008 in Case T‑147/06 En Route International v OHIM (FRESHHH), not published in the ECR, paragraph 19). Moreover, a misspelling does not generally amount to evidence of any creative aspect capable of distinguishing the applicant’s goods from those of other undertakings (see, to that effect, Case T‑331/99 Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform) [2001] ECR II‑433, paragraph 25 and the case-law cited). Lastly, where the misspelling of a word mark is not perceptible phonetically, it has no effect on the possible conceptual content that the relevant public will attribute to that mark (see, to that effect, judgment of 26 November 2008 in Case T‑184/07 Avon Products v OHIM (ANEW ALTERNATIVE), not published in the ECR, paragraph 26). In that regard, it should be noted that the applicant’s claim, allegedly based on the judgment in ANEW ALTERNATIVE (paragraph 16), that a fanciful or striking misspelling is automatically distinctive is not one of the General Court’s findings, but part of the applicant’s arguments in that case, in which the action was dismissed.
21 In the present case, it must be observed that the misspelling of the adjective ‘reliable’ in the sign at issue is perceptible visually rather than phonetically, so that there is no conceptual ambiguity for the relevant public. Even visually, it is apparent that the applicant has simply broken down the adjective ‘reliable’ into its verbal root ‘rely’ and its adjectival suffix ‘able’. The deconstruction of an adjective into its verbal root and its adjectival suffix is not unusual in a language such as English, and even less so for the relevant public, which is made up of highly attentive specialists, as the applicant recognises in its pleadings. It follows that the sign RELY-ABLE will, despite the misspelling, be immediately perceived and understood by the relevant public – even specialised – as meaning ‘reliable’, without the need for any interpretation.
22 The meaning of the word ‘reliable’ is clearly laudatory or promotional in relation to the services concerned, in particular clinical trials. It is well known, as indeed the applicant acknowledged at the hearing, that reliability is one of the main features of clinical trials.
23 Accordingly, it must be stated that the Board of Appeal did not err in taking the view (i) that the relevant public would directly perceive the sign RELY-ABLE as a deliberate misspelling of the English word ‘reliable’, and not as a particularly unusual, fanciful or striking spelling of such a kind as to confer distinctive character on that sign and (ii) that the laudatory or promotional meaning of the sign RELY‑ABLE, which is immediately perceived and understood as such by the relevant public, eclipsed any impression that the sign could indicate the commercial origin of the services concerned and would not be memorised by the relevant public as an indication of origin.
24 Nothing in the application indicates how that assessment might be called in question by the specificity of the services concerned or by the specialisation of the relevant public and its high level of attention. On the contrary, the specialisation of the relevant public in the medical or pharmaceutical field enables it to perceive immediately in the sign RELY-ABLE a laudatory or promotional reference to the ‘reliable’ nature of the services concerned, in particular of clinical trials.
25 By its third complaint, the applicant disputes that misspellings have become frequent in promotional messages in relation to clinical trials, which cannot be compared to everyday consumer goods.
26 The Court observes that the Board of Appeal’s assertion, in paragraph 15 in fine of the contested decision, that, ‘misspellings, in fact, have become a frequent feature of promotional messages’ constitutes a ground of the contested decision which was included for the sake of completeness. First of all, it must be observed that the decision of the Board of Appeal is based on a particular and specific assessment of the lack of distinctive character of the sign RELY-ABLE, which takes account of the features of that sign, especially the misspelling and the promotional message, in the context of the application of the legislative provision according to which trade marks which are devoid of any distinctive character are not to be registered. Thus, the decision of the Board of Appeal is not based whatsoever on the application of a general and abstract law on the connection between misspellings and promotional messages in contemporary marketing methods. Moreover, the use of the expression ‘in fact’ in the contested decision and its incidental position at the end of the paragraph indicate that that assertion hardly constitutes a decisive ground, but a ground of the contested decision which was included for the sake of completeness. Lastly, and moreover, the applicant itself submits, in paragraph 9 of the application, that the Board of Appeal erred in assuming that misspellings are ‘a frequent feature of promotional messages’ and that this was relevant to the case at hand. By that assertion, the applicant recognises, implicitly but necessarily, that that aspect of the contested decision constitutes a ground which was included for the sake of completeness.
27 In that regard, it should be recalled that, according to settled case‑law, even if a ground proves to be erroneous, that cannot justify the annulment of the measure which it affects if it is included for the sake of completeness and if other grounds exist which are sufficient to justify the measure (see, to that effect, judgment of 7 April 2011 in Case C‑321/09 P Greece v Commission, not published in the ECR, paragraph 61 and the case-law cited, and Case T‑154/10 France v Commission, [2012] ECR II-0000, paragraph 99). It is also settled case-law that complaints directed against grounds included in a judgment purely for the sake of completeness cannot lead to the judgment being set aside and are therefore ineffective (see, to that effect, order in Case C‑503/07 P Saint-Gobain Glass Deutschland v Commission [2008] ECR I‑2217, paragraph 62; judgment in Case C‑96/09 P Anheuser-Busch v Budějovický Budvar [2011] ECR I‑2131, paragraph 211; orders in Case C‑451/10 P TF1 v Commission [2011] ECR I-0000, paragraph 63; and Case C‑546/10 P Wilfer v OHIM [2011] ECR I-0000, paragraph 39).
28 Since this complaint is directed against a ground of the contested decision which was included for the sake of completeness, it must be rejected as ineffective. As a corollary, it is not necessary to examine whether or not the Board of Appeal’s assertion is erroneous.
29 Accordingly, the complaints of the first part of the single plea in law cannot succeed.
30 In the second part of the single plea in law, alleging that the Board of Appeal failed to take account of the distinctive features claimed of the sign at issue, the applicant essentially puts forward three complaints.
31 With respect to the first complaint, alleging that the sign RELY-ABLE is characterised by the grammatically incorrect juxtaposition of the terms ‘rely’ and ‘able’, it must be observed, in the present case, that the misspelling of the sign RELY-ABLE in no way constitutes the juxtaposition of two words, but, as was stated in paragraph 21 above, the deconstruction of the adjective ‘reliable’ into its verbal root ‘rely’ and its adjectival suffix ‘able’, which is hardly unusual for the relevant public. Accordingly, it is in vain that the applicant refers to the case‑law of the Court of Justice which addresses the combination of two non-distinctive words (Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619), that case-law being irrelevant for the misspelling of a single non‑distinctive word, as in the present case.
32 With respect to the second complaint, by which the applicant refers to the case‑law of the General Court on the use of a hyphen in the context of the relative grounds for refusal provided for in Article 8 of Regulation No 207/2009, it must be considered that the finding that the overall impression of a sign is ‘more striking’ in the context of the assessment of similarity for the purposes of Article 8 of that regulation does not offer guidance on the separate question whether an additional hyphen might render a sign applied for distinctive for the purposes of the absolute ground for refusal provided for in Article 7(1)(b) of that regulation. In the present case, it must be stated that the hyphen separating the verbal root ‘rely’ and the adjectival suffix ‘able’ is not capable of rendering the sign RELY-ABLE distinctive.
33 With respect to the third complaint, by which the applicant refers to other Community registrations of which it is the proprietor, including the mark RE-LY, it should be borne in mind, as is rightly stated in paragraph 16 of the contested decision, that the legality of the decisions of Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of OHIM’s previous decision‑making practice, which, in any event, cannot bind the Courts of the European Union (see, to that effect, Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47; Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 48; and Case T‑232/10 Couture Tech v OHIM (Representation of the Soviet coat of arms) [2011] ECR II-0000, paragraph 79).
34 Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must thus be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraph 77 and the case‑law cited, and judgment of 8 November 2012 in Case T‑415/11 Hartmann v OHIM (Nutriskin Protection Complex), not published in the ECR, paragraph 36). That case‑law applies to the specific case of registration of a Community trade mark a general principle according to which there cannot be equality in unlawfulness.
35 Accordingly, the complaints of the second part of the single plea in law cannot be upheld.
36 It is apparent from the foregoing that the mark at issue is not distinctive and that its registration is caught by the absolute ground for refusal provided for in Article 7(1)(b) of Regulation No 207/2009.
37 Accordingly, the Board of Appeal did not err in dismissing the appeal against the decision refusing protection, after finding, in paragraph 17 of the contested decision, that the word mark RELY-ABLE is not distinctive, on the ground that it could not be perceived and memorised by the relevant consumer as a trade mark, and that the sign as a whole would be perceived as nothing more than a promotional message whose aim is to highlight an important positive aspect of the services, namely that they are reliable.
38 In the light of the unfounded or, as the case may be, ineffective nature of the complaints put forward by the applicant in its single plea for annulment, this action must be dismissed in its entirety.
Costs
39 Under Article 87(2) of the Rules of Procedure of the Court, 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, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Boehringer Ingelheim International GmbH to pay the costs.
Azizi | Frimodt-Nielsen | Kancheva |
Delivered in open court in Luxembourg on 30 April 2013.
[Signatures]