JUDGMENT OF THE GENERAL COURT (Second Chamber)
16 January 2013 (*)
(Community trade mark – Invalidity proceedings – Community word mark STEAM GLIDE – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009)
In Case T‑544/11,
Spectrum Brands (UK) Ltd, established in Manchester (United Kingdom), represented by S. Malynicz, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by D. Botis, subsequently by G. Schneider and, finally, by G. Schneider and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Koninklijke Philips Electronics NV, established in Eindhoven (Netherlands), represented by L. Alonso Domingo, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 14 July 2011 (Case R 1289/2010-1), concerning invalidity proceedings between Koninklijke Philips Electronics NV and Spectrum Brands (UK) Ltd,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood (Rapporteur), President, F. Dehousse and J. Schwarcz, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 12 October 2011,
having regard to the response of OHIM lodged at the Registry of the General Court on 27 March 2012,
having regard to the response of the intervener lodged at the Registry of the General Court on 15 March 2012,
further to the hearing on 16 October 2012,
gives the following
Judgment
Background to the dispute
1 On 28 June 2006, Salton Europe Ltd, which subsequently became Russell Hobbs Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the word sign STEAM GLIDE.
3 The goods in respect of which registration was sought are in Class 9 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: ‘Electric irons, electric flat irons, electric irons for ironing clothes, parts and fittings for the aforementioned goods’.
4 On 22 May 2008, the sign at issue was registered as a Community trade mark under number 5167382.
5 On 12 January 2009, the intervener, Koninklijke Philips Electronics NV, filed with OHIM, under Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), a request for a declaration of invalidity of the Community trade mark at issue on the grounds, inter alia, that the trade mark had been registered in breach of Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009).
6 By decision of 1 June 2010, the Cancellation Division of OHIM rejected the application for a declaration of invalidity. In essence, it found that the sign at issue, taken as a whole, was neither descriptive nor devoid of any distinctive character.
7 On 13 July 2010, the intervener filed a notice of appeal at OHIM against the decision of the Cancellation Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.
8 By decision of 14 July 2011 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal, annulled the Cancellation Division’s decision and declared the Community trade mark at issue invalid. In essence, it gave the following reasons in support of its decision:
– as the goods in question are household appliances and the sign at issue is composed of English words, the relevant public is made up of average consumers, who are considered to be well informed, observant and circumspect, from the United Kingdom, Ireland and Malta (point 15);
– the expression ‘steam glide’ is descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, because (i) it is made up of two English words both of which refer directly to the nature and purpose of the goods in question (points 20 to 24); (ii) there is nothing unusual, in particular with regard to the syntax, about the combination of the words ‘steam’ and ‘glide’ (points 25 and 27); (iii) as a whole, therefore, the expression ‘steam glide’ constitutes an immediate, direct and easily understandable indication that the irons in question emit steam and move smoothly across clothes and this expression does not create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the words of which it is composed so far as those goods are concerned (point 28);
– the sign at issue is banal and devoid of distinctive character in respect of the goods in question, within the meaning of Article 7(1)(b) of Regulation No 207/2009, as the average consumer will perceive it as a reference to irons that move without difficulty when operated (points 32 to 34).
9 On 18 July 2011 the application for registration of the trade mark STEAM GLIDE was assigned to the applicant, Spectrum Brands (UK) Ltd. The transfer was entered in the Community Trade Mark Register on 14 October 2011.
Forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the intervener to pay the costs.
11 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 In support of its action, the applicant relies on two pleas in law, alleging, respectively, infringement of Article 7(1)(c) of Regulation No 207/2009 and infringement of Article 7(1)(b) thereof.
First plea: infringement of Article 7(1)(c) of Regulation No 207/2009
13 This plea is divided into two parts.
First part of the plea
14 By the first part of its plea, the applicant in essence complains that the Board of Appeal erred in its assessment, under Article 7(1)(c) of Regulation No 207/2009, of the meaning and syntax of the sign at issue and its component parts and of its alleged aptness as an immediate and direct descriptive term for the goods in question.
15 Before the two more specific complaints put forward by the applicant in support of its argument are addressed, it should be observed that under Article 7(1)(c) of Regulation No 207/2009 ‘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’ are not to be registered.
16 By prohibiting the registration as Community trade marks of such signs and indications, Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings might wish to describe their own goods by using precisely the terms registered as a trade mark (see Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31 and the case-law cited, and judgment of 30 November 2011 in Case T‑123/10 Hartmann v OHIM (Complete), not published in the ECR, paragraph 19 and the case-law cited).
17 Thus, signs and indications which may serve in trade to designate the characteristics of the goods or services for which registration is sought are, by virtue of Regulation No 207/2009, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark, in other words that of identifying the commercial origin of the goods or services in question so as to put the consumer who acquires them in a position, on a subsequent purchase, to make the same choice if his experience proves positive or to choose differently if it does not – without prejudice to the possibility of distinctive character being acquired through use under Article 7(3) of Regulation No 207/2009 (see OHIM v Wrigley, paragraph 30; judgment of 2 April 2008 in Case T‑181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 35 and the case-law cited).
18 As the Board of Appeal stated in point 16 of the contested decision, the signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, the goods or services for which registration is sought (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 20; see also Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 34 and the case-law cited).
19 The descriptiveness of a sign may thus be assessed only, first, by reference to the goods or services concerned and, second, by reference to the presumed perception of an average consumer of the category of goods and services in question, who is reasonably well informed and reasonably observant and circumspect (see judgment of 22 November 2011 in Case T‑561/10 LG Electronics v OHIM (DIRECT DRIVE), not published in the ECR, paragraph 18 and the case-law cited).
20 Furthermore, registration of a Community trade mark is excluded where the mark is descriptive in one of the official languages of the European Union (see, to that effect, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 40).
21 For a sign to be caught by the prohibition set out in the abovementioned provision, 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 one of their characteristics (Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II‑2957, paragraph 30; see also Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 25; and Complete, paragraph 21 and the case-law cited).
22 With regard to signs consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, it is apparent from Procter & Gamble v OHIM, (paragraph 43), that an expression, although it alludes to the function which the goods or services are supposed to fulfil, none the less does not contravene the provisions of Article 7(1)(c) of Regulation No 207/2009, if the – syntactically unusual – juxtaposition of the words that form the expression is not a familiar expression in the language in issue, in this case English, either for designating the goods or for describing their essential characteristics.
23 In relation to the equivalent provision in Article 3(1)(c) of 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), the Court has also held (Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 104, and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraphs 37 to 41) that a trade mark consisting of a word or neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the word or neologism and the mere sum of its parts: that assumes either that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts or that the word or neologism has become a part of everyday language and has acquired a meaning of its own, with the result that it is now independent of its component parts (C‑408/08 P Lancôme v OHIM and CMS Hasche Sigle [2010] ECR I‑1347, paragraphs 61 and 62; see also PAPERLAB, paragraph 27, and judgment of 21 September 2011 in Case T‑512/10 Nike International v OHIM (DYNAMIC SUPPORT), not published in the ECR, paragraph 16 and the case-law cited). In the latter case, it is then necessary to ascertain whether the word which has acquired a meaning of its own is not itself descriptive for the purposes of the same provision.
24 Moreover, for OHIM to refuse to register a trade mark on the basis of Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that article 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 application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must thus be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (OHIM v Wrigley, paragraph 32, and judgment of 9 March 2010 in Case T‑15/09 Euro-Information v OHIM (EURO AUTOMATIC CASH), not published in the ECR, paragraph 39).
25 In this case, the Board of Appeal held, in point 15 of the contested decision, that the public by reference to which the absolute ground for refusal at issue should be assessed was made up of average consumers, considered to be well informed, observant and circumspect, from the United Kingdom, Ireland and Malta.
26 That definition of the relevant public is not disputed and, in view of the considerations set out in the contested decision, there is no need to call it in question in these proceedings. In that regard, it should be borne in mind that it is clear from Article 7(2) of Regulation No 207/2009 that the absolute grounds for refusal set out in Article 7(1) apply even though they obtain in only part of the European Union.
27 As regards the relevant public’s understanding of each of the two terms of which the expression in question is composed and their descriptive character from the point of view of that public, the Board of Appeal relied, in point 20 of the contested decision, on the meaning that the Oxford English Dictionary gives to the words ‘steam’ and ‘glide’. That has not been disputed per se by the applicant.
28 However, while admitting that the word ‘steam’ is directly descriptive and perhaps even banal in relation to the goods in question, the applicant submits, in the first of its complaints, that the word ‘glide’ is evocative and elicits ‘qualitative rather than descriptive associations’. It submits that the word in fact conjures up the image of the product moving as a glider does, hovering above the fabric, without touching it, whilst in reality steam irons always operate in contact with the fabric. Thus, the applicant argues, the word ‘glide’ stimulates the imagination to create a mental image of suspension and hovering which does not in fact exist.
29 That argument must be rejected. Admittedly, as the applicant maintained at the hearing, the word ‘glide’ may mean several different things depending on more or less subtle shades of meaning. However, as the Board of Appeal rightly stated in point 23 of the contested decision, ‘glide’, when it is specifically associated with the goods in issue, directly describes the movement of an iron used to press clothes. In that context, the intervener also points out, correctly, that, according to the Oxford English Dictionary, the word ‘glide’ refers to movement ‘over a surface’ and not above a surface as the applicant maintains by referring to the image of a glider. Since the smooth movement of an iron across clothes, which results from the steam, corresponds to what the consumer may expect from a product of that type, the description of that movement by the word in question thus does not ‘conjure up’ an image of hovering but is clearly descriptive of a very real characteristic of the goods in issue.
30 The conclusion must therefore be that each of the words of which the expression ‘steam glide’ is composed, taken in isolation, is descriptive of a characteristic of the goods in issue.
31 With regard to the combination of the two words ‘steam’ and ‘glide’ in the expression ‘steam glide’, the applicant submits, in a second complaint, that the Board of Appeal wrongly concluded that there was nothing syntactically unusual about the structure of that expression. Although the word ‘steam’ is, in its submission, generally associated with a noun in an ‘adjective-noun’ combination (as in the examples listed in point 22 of the contested decision, namely the combinations ‘steam bakery’, ‘steam bath’, ‘steam box’, ‘steam chamber’, ‘steam chest’, ‘steam coil’, ‘steam kiln’, ‘steam kitchen’, ‘steam laundry’, ‘steam oven’, ‘steam pan’, ‘steam pipe’, ‘steam pot’, ‘steam radiator’, ‘steam table’, ‘steam tank’ and ‘steam tube’), the applicant argues that the word ‘glide’ will not be perceived as a noun, but as a verb ‘as in the act of gliding, i.e. to steam glide’. There is thus an ‘immediate departure’ from the ordinary syntax of word combinations involving the word ‘steam’. Furthermore, there is extreme ellipsis in the expression at issue and words seem to be missing that might explain the meaning in a clear way. All this obscures and interferes with the capacity of the sign to function as a simple descriptive statement. In support of these arguments, the applicant cites the judgment in Procter & Gamble v OHIM and the Opinion of Advocate General Jacobs in OHIM v Wrigley, points 18 to 22.
32 That argument too must be rejected. In that regard, first, the intervener rightly points out that a combination of words such as ‘steam’ and ‘glide’ is not unusual in English. It thus explains, more specifically, that, according to the Oxford English Dictionary, the word ‘glide’ is also a noun in the English language. Similarly, OHIM submitted at the hearing that the word ‘glide’ could be used as a noun qualifying another noun, as in the expression ‘dance glide’. Thus, even if the applicant’s argument is followed, the expression ‘steam glide’ will be readily perceived as one of the many compounds that are common in English, examples of which were cited by the Board of Appeal in point 22 of the contested decision. The intervener, again correctly, adds the expression ‘steam motion’ to that list, which is fairly common in English, as is shown by the passages from publications annexed to the response.
33 Second, OHIM submits, also rightly, that there is nothing unusual in English about the combination of the word ‘steam’ with a verb, as, for example, in the expressions ‘steam clean’, ‘steam wash’ or ‘steam iron’. The applicant having responded to that submission, at the hearing, by maintaining that in those various expressions the words ‘clean’, ‘wash’ or ‘iron’ were – unlike, in its view, the word ‘glide’ – directly descriptive, it is sufficient to point out that that argument has already been rejected in paragraph 29 of this judgment. In any event, that question is irrelevant for the purpose of ascertaining whether or not the expression at issue is syntactically unusual.
34 It follows from the foregoing considerations that, from the point of view of syntax, there is nothing unusual in English about the combination of the words ‘steam’ and ‘glide’ in the expression ‘steam glide’.
35 The Court also takes the view that there is no perceptible difference between the expression ‘steam glide’ and the mere sum of the words of which it is composed. ‘Steam glide’ does not produce an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by those words, with the result that the expression does not amount to any more than the sum of its parts. The applicant’s arguments must therefore be rejected applying the case-law cited in paragraph 23 of this judgment.
36 In any event, what is important is that the expression ‘steam glide’, associated with the goods in issue, should be apt to describe directly and specifically one of the characteristics of those goods – that is, their capacity to glide smoothly over ironed clothes by virtue of the steam generated. As that is indeed the case, the applicant’s argument must also be rejected applying the case-law cited in paragraph 24 of this judgment.
37 Nor does the Court consider there to be, in English, extreme ellipsis in the expression at issue, the English lexicon including an almost infinite number of compounds (such as, for example, ‘shopping bag’, ‘sleeping bag’, ‘doggy bag’, etc). Nothing thus prevents the expression from being interpreted clearly and directly by the relevant public when it is associated with the goods in issue.
38 It follows from all the foregoing that the two complaints forming the first part of the first plea are without substance. This part of the plea must accordingly be rejected as unfounded.
Second part of the plea
39 By the second part of the first plea, the applicant complains, in essence, that the Board of Appeal did not expressly refer in the reasons supporting its assessment to the general interest that underlies Article 7(1)(c) of Regulation No 207/2009, namely the interest in not allowing descriptive signs to be monopolised by individual entities, and did not assess whether it was reasonable to suppose that other traders might have an interest in using the sign at issue in the future, through an analysis of the product market in question.
40 It is sufficient, for the purpose of rejecting that line of argument, to observe that, although Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the general interest, namely that descriptive signs or indications relating to the characteristics of categories of goods or services for which registration is sought may be freely used by all (OHIM v Wrigley, paragraph 31), the fact remains that application of Article 7(1)(c) does not depend on there being a real, current or serious need to leave a sign or indication free for the benefit of third parties; consequently it is necessary only to consider, on the basis of the relevant meaning of the sign in question, whether, from the viewpoint of the target public, there is a sufficiently direct and specific relationship between the sign and the goods for which registration is sought (see Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraphs 39 and 40 and the case-law cited; Case T‑28/10 Euro-Information v OHIM (EURO AUTOMATIC PAYMENT) [2011] ECR II‑1535, paragraph 44).
41 The second part of the first plea must therefore be rejected as unfounded and, with it, that plea in its entirety.
Second plea: infringement of Article 7(1)(b) of Regulation No 207/2009
42 The applicant complains that the Board of Appeal failed to perform a proper analysis that took due account of the relevant criteria applicable to the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009. First, the Board of Appeal did not assess the distinctive character of the sign at issue in the light of the essential function of the trade mark. Second, the Board of Appeal did not examine the distinctive character of the goods in question from the perspective of the relevant consumer. Third, the Board of Appeal did not carry out an independent examination of the respective grounds for refusal set out in Article 7(1)(b) and Article 7(1)(c) of Regulation No 207/2009 respectively. Fourth, the Board of Appeal did not take account of the general interest which underlies the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009. Fifth and finally, the Board of Appeal did not examine the trade mark at issue in its entirety.
43 In that regard, the Court recalls that under Article 7(1)(b) of Regulation No 207/2009 trade marks which are devoid of any distinctive character are not to be registered.
44 The notion of general interest underlying that provision is, evidently, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 56 and the case-law cited).
45 According to settled case-law, each of the grounds for refusal to register listed in Article 7(1) of Regulation No 207/2009 is independent of the others and requires separate examination. 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 each of those grounds for refusal is examined may, or even must, reflect different considerations, according to the ground for refusal in question (see Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 59 and the case-law cited).
46 In relation to the second plea, it should, however, also be borne in mind that, according to settled case-law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for the sign at issue not to be registrable as a Community trade mark (see order of 13 February 2008 in Case C‑212/07 P Indorata-Serviços e Gestão v OHIM, not published in the ECR, paragraphs 27 and 28 and the case-law cited; see also judgments of 21 January 2009 in Case T‑399/06 giropay v OHIM (GIROPAY), not published in the ECR, paragraph 45, and of 2 May 2012 in Case T‑435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 41 and the case-law cited).
47 In rejecting the first plea in law put forward in this action, the Court has confirmed the Board of Appeal’s finding that the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 applied in the present case.
48 That being so, it does not appear necessary to rule on the second plea for annulment in order to give a decision on the substance of the action (see, to that effect, judgment of 2 February 2012 in Case T‑321/09 skytron energy v OHIM (arraybox), not published in the ECR, paragraph 48).
49 For the sake of completeness, the Court observes that there is a measure of overlap between the scope of Article 7(1)(b) of Regulation No 207/2009 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(c) being distinguished from Article 7(1)(b), however, in that it covers only one specific circumstance in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑00000, paragraph 47). Therefore, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services for the purposes of Article 7(1)(b) of that regulation (see judgment of 29 March 2012 in Case T‑242/11 Kaltenbach & Voigt v OHIM (3D eXam), not published in the ECR, paragraph 39 and the case-law cited).
50 In those circumstances, and in view of the conclusions reached on examination of the first plea, the second plea appears to be manifestly unfounded.
51 It follows from all the foregoing that the action must be dismissed in its entirety.
Costs
52 Under Article 87(2) 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.
53 Since the applicant has been unsuccessful, it must be ordered to pay, in addition to its own costs, the costs incurred by OHIM and the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Spectrum Brands (UK) Ltd to pay, in addition to its own costs, the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Koninklijke Philips Electronics NV.
Delivered in open court in Luxembourg on 16 January 2013.
[Signatures]