Case T-157/08

Paroc Oy AB

v

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

(Community trade mark – Application for Community word mark INSULATE FOR LIFE – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009) – Merely confirmatory decision – Partial inadmissibility)

Summary of the Judgment

1.      Actions for annulment – Action against a decision which confirms an earlier decision not challenged in due time – Inadmissibility – Definition of confirmatory decision

(Art. 230 EC)

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

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

3.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Mark consisting of a number of elements – Possibility for the competent authority to carry out an examination of each of the constituent elements of the mark

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

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

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

1.      A decision which merely confirms an earlier decision not challenged in due time is not an actionable measure. For the purpose of not allowing the time-limit for bringing an action against the confirmed decision to recommence, an action against such a confirmatory decision must be declared inadmissible.

A decision is regarded as a mere confirmation of an earlier decision if it contains no new factors as compared with the earlier measure and is not preceded by any re-examination of the situation of the addressee of the earlier measure.

Determining whether and to what extent the second decision is a mere confirmation of the first decision requires the identification of the respective circumstances of the disputes which gave rise to those decisions. For that purpose, it must be assessed whether the parties to the proceedings at issue, their submissions, their pleas, their arguments and the relevant matters of law and fact characterising those proceedings and determining the operative parts of those decisions were identical or not.

If the second decision is to be regarded as merely confirmatory of the first decision, it is therefore appropriate to examine, firstly, whether the second decision is based on new factors which may affect its operative part and the grounds constituting the essential basis thereof and, secondly, whether, in that decision, the applicant’s situation was re-examined.

(see paras 29-30, 32, 35)

2.      For a trade mark to possess distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings. It is not necessary, for that purpose, for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality.

On the other hand, signs which do not enable the public concerned to repeat a purchasing experience if it proves to be positive, or to avoid it if it proves to be negative, when acquiring the goods or services in question on a subsequent occasion, are devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. That is true, in particular, of signs commonly used to market the goods or services concerned. Such signs are in fact deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the product or service in question.

(see paras 44-45)

3.      In order to assess whether a compound word sign is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, the relevant meaning, established on the basis of all its constituent elements and not only one of them, must be taken into account. Consequently, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character. In other words, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed.

(see para. 50)

4.      The word sign INSULATE FOR LIFE, registration of which as a Community trade was sought in respect of the services corresponding to the description ‘Building construction; repair; installation services’ in Class 37 of the Nice Agreement, is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark from the point of view of the public which has a command of the English language.

In the light of the services at issue, the relevant public will understand the mark applied for, immediately and without further analytical effort, as a reference to very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services. Even as a laudatory or promotional slogan, that word sign is not sufficiently original or resonant to require at least some interpretation, thought or analysis on the part of the relevant public, as that public is led to associate that sign immediately with the services at issue, which are capable of being marketed by any undertaking active in the construction and insulation sector.

(see paras 48, 52-53)