JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)
12 September 2007 (*)
(Community trade mark – Application for the Community word mark BASICS – Absolute grounds for refusal – Lack of distinctive character – Descriptive mark – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 – Distinctive character acquired through use – Article 7(3) of Regulation No 40/94)
In Case T‑164/06,
ColArt/Americas, Inc., established in Piscataway, New Jersey (United States), represented by E. Soler Borda and R. Zeineh, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 April 2006 (Case R 788/2005-4) refusing registration of the word mark BASICS as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of H. Legal, President, I. Wiszniewska-Białecka and E. Moavero Milanesi, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 21 June 2006,
having regard to the response lodged at the Court Registry on 18 September 2006,
further to the hearing on 2 May 2007,
gives the following
Judgment
Background to the dispute
1 On 31 October 2001 ColArt/Americas, Inc. lodged with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) an application for registration of the word mark BASICS in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The goods for which registration of the mark was sought are in Class 2 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: ‘Water colour paints, varnishes other than insulating varnish, lacquers in the nature of a coating, enamel coatings in the nature of paints, colouring matters in the nature of acrylic paints, acrylic primers, oils paints, water colours, artists’ varnishes, pastel oil colours, liquid leaf colours, artists’ alkyd colours, artists’ mediums namely paint thinners and solvents, inks and dyes for use by artists or for use in handcrafts’.
3 By decision of 12 May 2005, the examiner rejected the application for registration under Article 7(1)(b) and (c) of Regulation No 40/94 on the ground that the trade mark BASICS would not distinguish the goods at issue in view of the fact that its meaning may serve in trade to describe the basic goods, that is the fundamental, most important or most commonly used goods which an artist or decorator may require.
4 On 5 July 2005 the applicant filed an appeal with OHIM against that decision, contending that the mark for which registration had been sought, being complex and, in the final analysis, vague and possessing a minimum degree of imagination, was not descriptive but had a distinctive character. Moreover, referring to Article 7(3) of Regulation No 40/94, the applicant claimed that that mark had acquired a distinctive character by reason of its use.
5 By decision of 7 April 2006 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. The Board of Appeal noted that, since the word ‘basics’ is an English word, the relevant public was primarily made up of persons established in the Community who are native English speakers or who have a sufficient knowledge of the English language. For this public the word ‘basics’ refers to basic goods, that is, the most important goods, elementary goods or the goods most commonly used by artists. Therefore, the mark BASICS should be considered to be descriptive, within the meaning of Article 7(1)(c) of Regulation No 40/94, and accordingly devoid of distinctive character within the meaning of Article 7(1)(b) of the same regulation. In relation to the distinctive character which the mark BASICS was said to have acquired in accordance with Article 7(3) of Regulation No 40/94, the Board of Appeal found that the applicant had failed to prove its use, before the date on which the application for registration was filed, in those parts of the Community where that mark had been considered to be lacking distinctive character.
Forms of order sought
6 The applicant claims that the Court should:
– annul the contested decision in its entirety;
– in the alternative, annul the contested decision in so far as it concerns colouring materials in the nature of acrylic paints and artists’ varnishes.
7 OHIM contends that the Court should:
– reject as inadmissible the documents forming Annexes 10, 11 and 12;
– dismiss the action as unfounded;
– order the applicant to pay the costs.
8 At the hearing OHIM withdrew its request that the Court reject Annexes 10, 11 and 12 to the application as inadmissible and this was duly noted by the Court.
Law
9 In support of its action, the applicant relies on three pleas in law, alleging infringement, respectively, of Article 7(1)(c), Article 7(1)(b) and Article 7(3) of Regulation No 40/94.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
10 Firstly, the applicant points out that, according to the case-law, for a sign to be considered to be descriptive, it must suggest a sufficiently direct and concrete link to the goods and services in question to enable the target public immediately, and without further thought, to perceive a description of the category of those goods and services or of one of their characteristics. The applicant considers that the word ‘basics’ is not used in the English language to describe the goods in question, but is a complex and vague word with a plurality of meanings which does not have any direct and sufficiently precise link with those goods. The Board of Appeal did not assess the link which exists between the word ‘basics’ and the goods concerned since, even allowing that the word ‘basics’ might suggest ease of access or ease of use, that word does not designate objectively or specifically the characteristics of the goods covered by the mark for which registration is sought.
11 Secondly, the applicant argues that the Board of Appeal did not establish that the word ‘basics’ is used or could be used in the future to describe the goods concerned in the fine arts painting materials market.
12 Thirdly, the applicant claims that the conclusion reached by the Board of Appeal in the contested decision conflicts with OHIM’s previous decisions. In registering the Community trade mark BASICA, OHIM considered, on the one hand, that the word ‘basica’ did not have any descriptive meaning for the Spanish public with respect to the cosmetic, pharmaceutical or dietetic products covered by that trade mark since, in the light of the complex and, in the final analysis, vague meaning of that word, it was not likely to convey a clear sense capable of being understood directly, unambiguously and immediately by the Spanish consumer. OHIM took the view, on the other hand, that that mark had the minimum amount of fantasy required to enable it to indicate the origin of the goods. Similarly, the trade marks FORMULA BASIC and BASIC PRICE, which include descriptive words such as ‘formula’ and ‘price’, have been registered as Community trade marks, which shows that the word ‘basic’ is not descriptive.
13 Fourthly, the applicant points out that the trade mark BASICS has been registered by OHIM for goods within Classes 29, 30 and 31 and that it has been registered outside the Community, in particular in countries which are predominantly English-speaking such as the United States and Canada. In addition, other marks containing the word ‘base’ or the word ‘basic’ have been registered as national trade marks within the Community. That indicates that the sign BASICS could be registered as a Community trade mark.
14 OHIM points out, first, that the relevant public consists of the average consumer, who is reasonably well-informed and reasonably observant; the goods in question are replaced on a frequent basis and are relatively inexpensive. Since ‘basics’ is an English word, that public will be primarily made up of the native English speakers in the Community and, to a lesser extent, persons in the Community who have a sufficient knowledge of the English language.
15 Next, OHIM states that the mark for which registration is sought must be considered to be descriptive if there exists a sufficiently definite and direct connection between the mark and any of the characteristics of the goods concerned, that is to say when the connection is probable and not just speculative or accidental for the consumers concerned and may be perceived by those consumers immediately and without further thought.
16 At least one of the possible meanings of the sign BASICS is to describe unambiguously and directly a quality of goods that the target public is likely to take into account when deciding whether to buy the product, namely that they are unsophisticated and particularly appropriate for amateurs. That is corroborated by the copies of the packaging provided by the applicant in Annex 13 to the application, which feature the phrases ‘Pour l’artiste débutant – For the beginning artist’ or ‘Qualité étude’ (‘study quality’). Moreover, it was acknowledged by the applicant that the use of the word ‘basics’ is intended to give the agreeable impression that the goods concerned are fundamental and easy to use. The fact that the word ‘basics’ is not a familiar expression in the English language with respect to the goods concerned is irrelevant since the descriptive character of a sign must be assessed with regard to its abstract capacity to describe the relevant goods.
17 Finally, OHIM asserts that it is not bound by registrations of Community trade marks which allegedly bear similarities to the mark BASICS, since the signs and goods covered by those registrations are different, nor by any national registration, in particular if registered outside the Community. In addition, the perception of the sign by non-English-speaking consumers in Member States such as France or Spain, where they are in the majority, is irrelevant in the present case.
Findings of the Court
18 Under Article 7(1)(c) of Regulation No 40/94, 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. Article 7(2) states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
19 Thus, signs and indications which may serve in trade to designate the characteristics of the goods or services in respect of which registration of the mark is sought are, under Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 30, and Case T‑387/03 Proteome v OHIM (BIOKNOWLEDGE) [2005] ECR II‑191, paragraph 23).
20 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 25).
21 According to the case‑law, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) of Regulation No 40/94 does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists and covers not only the characteristics listed but any other characteristic of the goods and services designated by the mark. In fact, in the light of the public interest underlying that provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see, in relation to 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 legislative content of which is, in essence, identical to that of Article 7(1)(c) of Regulation No 40/94, Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 102).
22 In the present case, the goods for which registration of the mark BASICS is sought are paints, varnishes, lacquers, colours, thinners and other similar articles. Given their relatively frequent use and low cost, those goods may be regarded as being intended for the general consumer and, therefore, the relevant public is deemed to be the general public, as found by the Board of Appeal. Similarly, the Board of Appeal rightly considered that, since the word sign at issue is an English word, the relevant public in relation to which it is necessary to assess whether that sign has descriptive character is the English‑speaking public.
23 As found by the Board of Appeal and acknowledged by the applicant, in the English language, the word ‘basics’ denotes essential, fundamental or elementary elements, which constitute a basis. In reading that everyday word in the English language, the target public may thus immediately, and without further thought, perceive it as a description of one of the characteristics of the relevant goods, namely the fact that they are basic goods for the Fine Arts and for decoration. The applicant even acknowledged (paragraph 13 of the application) that the word ‘basics’ is intended to give potential customers the impression that the relevant goods are fundamental and easy to use. In addition, it is apparent from Annexes 13 and 14 to the application that the applicant emphasises that characteristic to market the relevant goods by presenting them as being intended for inexperienced painters and students.
24 In the light of those factors, the target public may perceive the word ‘basics’ as indicating that the goods marketed under the sign BASICS are the most useful and important of the artist’s fundamental and elementary materials, which necessarily points to one of the characteristics of the relevant goods. That consideration applies, above all, to the United Kingdom and Ireland, given that English is the main language in those two Member States and, consequently most consumers in those States may be regarded as forming part of the target public.
25 It follows from the above that the Board of Appeal rightly found that the mark BASICS describes, in a direct manner, one of the characteristics of the goods in question. Therefore, and in the light of the wording of Article 7(2) of Regulation No 40/94, from which it follows that a mark must be refused registration even if it is devoid of distinctive character in only part of the Community, the Board of Appeal did not err in law in finding that the application for registration of the mark at issue should be rejected under Article 7(1)(c) of that regulation.
26 Those findings cannot be called into question by the arguments put forward by the applicant.
27 First of all, neither the arguments based on the fact that the word ‘basics’ has not actually been used by other economic operators to designate painting materials nor the arguments based on the supposed absence of a direct and sufficiently precise link between that word and such goods are relevant. According to the case‑law, in order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to by 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 therefore 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, cited in paragraph 19 above, paragraph 32, and Case T‑322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II‑835, paragraph 92).
28 Next, the applicant’s argument that OHIM has, in the past, registered marks containing similar words to the word mark BASICS cannot be upheld. In the first place, the marks cited by the applicant can be distinguished from the mark for which registration is sought in that they denote goods and services other than those which are involved in this case. Secondly, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a Community trade mark must be assessed only on the basis of the relevant Community legislation, as interpreted by the Community judicature, and not on the basis of a different approach taken in the past by the Boards of Appeal in their decisions (PAPERLAB, cited in paragraph 20 above, paragraph 39, and the judgment of 30 November 2006 in Case T‑43/05 Camper v OHIM – JC (BROTHERS by CAMPER) [2006], not published in the ECR, paragraph 93).
29 Finally, the applicant’s arguments that there are national decisions registering the trade mark BASICS for identical or similar goods cannot be upheld. 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 (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47, and Case T‑15/05 De Waele v OHIM (Shape of a sausage) [2006] ECR II‑1511, paragraph 44). OHIM and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 47, and PAPERLAB, see paragraph 20 above, paragraph 37).
30 It follows from the above that the first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94 must be rejected as unfounded.
31 In addition, as is clear from Article 7(1) of Regulation No 40/94, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal listed in that provision applies (Case T‑19/99 DKV v OHIM (COMPANYLINE) [2000] ECR II‑1, paragraph 30, and Joined Cases T‑178/03 and T‑179/03 CeWe Color v OHIM (DigiFilm and DigiFilmMaker) [2005] ECR II‑3105, paragraph 42).
32 In the light of the above considerations, and given that the Board of Appeal rightly refused to register the mark BASICS pursuant to Article 7(1)(c) of Regulation No 40/94, there is no need to examine the second plea in law raised by the applicant, alleging infringement of Article 7(1)(b) of that regulation.
33 However, under Article 7(3) of Regulation No 40/94, paragraph 1(b) to (d) of that article is not to apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Therefore, it is necessary to examine the third plea in law raised by the applicant.
The third plea, alleging infringement of Article 7(3) of Regulation No 40/94
Arguments of the parties
34 The applicant claims that the mark for which registration is sought has acquired distinctive character through use in accordance with Article 7(3) of Regulation 40/94, at least as regards colouring materials in the form of acrylic paint and artists’ varnishes.
35 Firstly, the sworn declaration by the General Manager of the European distributor for ‘BASICS’ goods, produced by the applicant before the Board of Appeal and showing the turnover and units sales volumes for acrylic paint between 1993 and 2004, establishes that that trade mark was used in Europe prior to the lodging of the application for registration. In particular, that declaration shows the increase in sales in the United Kingdom between 2000 and 2001 and in other non English-speaking countries where the public has a sufficient knowledge of the English language. That public should also be taken into account, especially since the word ‘basics’ is similar to its translation in other European languages such as French, Spanish or Dutch.
36 Second, the applicant asserts that it is the world leader in goods for handcrafts, the fine arts and artists, and that it enjoys a one-third share of the world market for artists’ paints, its goods being distributed in more than 120 countries. More specifically, the product range ‘basics’ holds first place on the world market for acrylic paints for the fine arts, a market in which the mark BASICS is promoted by means of communication and education programmes and technical and specialist literature.
37 Third, the major importance of the sign BASICS in the identification of the goods concerned, in that it represents the most visible element featured on the tubes of paint, attracts the attention of the consumer and thus constitutes an obvious use of the mark for which registration is sought.
38 Fourth, the fact that no other use of the word ‘basics’ by competitors in the field of fine arts has been reported to date establishes that the trade mark for which registration is sought is capable of identifying the goods sold by the applicant.
39 OHIM disputes, as a preliminary point, the admissibility of the documents in Annexes 10, 11 and 12 to the application, which were not submitted to the Board of Appeal and therefore must be disregarded, by virtue of Article 135(4) of the Rules of Procedure of the Court of First Instance.
40 In addition, OHIM points out that, in order to establish the acquisition of distinctive character through use of a mark, it is necessary to show that, because of the trade mark, at least a significant proportion of the target public in the Member States concerned identifies the goods in question as originating from a particular undertaking. It is therefore necessary to examine the perception of the English-speaking public of the Community of the trade mark for which registration is sought, especially in the United Kingdom and in Ireland, where English is the official language, since the perception of English-speaking consumers in other Member States of that mark has only a secondary and corroborating role.
41 In that context, OHIM points out, firstly, that distinctive character acquired through use of the mark has to be shown by documentary evidence establishing such use before the date on which the application was filed rather than before the date of registration. Therefore, the copies of packaging and printouts of the Liquitex website submitted by the applicant, since they are undated or bear a date later than the date on which the application for registration was filed, could not have been taken into account by the Board of Appeal. In any event, these documents, which were not properly corroborated by other evidence are of only weak evidential value since they contain no indication of the importance, to the general public, of the distribution of the relevant goods.
42 Secondly, it is clear from the sworn declaration submitted by the applicant that sales of the goods covered by the mark for which registration is sought in English-speaking countries in the Community before the date on which the application for registration was filed were minimal.
43 Thirdly, the applicant did not provide any evidence of the market share held by the mark for which registration is sought or on the amounts invested to promote it, although such evidence would be relevant for the purposes of assessing whether the mark had acquired distinctive character through use.
Findings of the Court
44 As regards the documents in Annexes 10, 11 and 12 of the application, which were not submitted in the course of the administrative proceedings, it is necessary to recall that the purpose of an action before the Court of First Instance is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It is not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (Case T‑128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II‑701, paragraph 18, Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 14). Therefore, those documents must be dismissed without there being any need to examine their evidential value.
45 As regards distinctive character acquired through use of the mark under Article 7(3) of Regulation No 40/94, it is necessary to recall the case‑law, according to which the acquisition of such distinctive character 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 bottle of beer) [2004] ECR II‑1391, paragraph 42).
46 In that regard, it must be shown that the mark had become distinctive through use before the application for registration was filed (Case T‑247/01 eCopy v OHIM (ECOPY) [2002] ECR II‑5301, paragraph 36, and Case T‑262/04 BIC v OHIM (Shape of a flint lighter) [2005] ECR II‑5959, paragraph 66). In addition, that use must be demonstrated in the substantial part of the Community where it was devoid of any distinctive character under Article 7(1)(b) to (d) of Regulation No 40/94 (Case T‑91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II‑1925, paragraph 27, and BIC v OHIM, paragraph 62). In addition, the circumstances in which the requirement that a mark must have become distinctive may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data (Shape of a bottle of beer, cited in paragraph 45 above, paragraph 39, and the case‑law cited).
47 Thus, it is necessary to take account, in particular, of 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 classes of persons who, because of the mark, identify goods as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations and opinion polls (Shape of a beer bottle, cited in paragraph 45 above, paragraph 44, and the case‑law cited).
48 In the present case, the onus was on the applicant to prove, before the Board of Appeal, that the mark BASICS had been used before the application for registration was filed, on 31 October 2001, in the parts of the Community where the mark has been considered to be descriptive, namely the United Kingdom and Ireland.
49 For that purpose, the applicant produced before the Board of Appeal, first, documents featuring tubes of acrylic paint bearing the mark BASICS, second, print outs of a website belonging to the applicant containing promotional material and, finally, a sworn declaration by the General Manager of the European distributor for goods designated by the mark BASICS concerning sales of acrylic paint between 1993 and 2004. The applicant also claimed that the product line ‘basics’ was the world market leader for fine arts acrylic paints as a result of its innovative efforts.
50 None of the documents featuring tubes of acrylic paint bearing the mark BASICS and none of the print-outs containing promotional material contains any form of reference to the dates and places where those goods were marketed or where such material was used. Therefore, the Board of Appeal rightly found that those documents were not capable of showing that the target public perceived the mark for which registration was sought to be an indication of the commercial origin of those goods.
51 The sworn declaration referred to above shows, in addition, that no goods bearing the mark for which registration is sought were sold in Ireland before 2002. As regards the United Kingdom, those goods were not marketed before 2000, in the course of which 75 units were sold out of a total of 443 329 units sold in the European Union, whereas 1 008 sales were made in 2001 out of a total of 513 003 units sold in the European Union. In the light of that data, the Board of Appeal could validly find that use of the mark BASICS in the United Kingdom and Ireland before 31 October 2001 had been minimal.
52 As regards the applicant’s assertions as to the market share held by the mark BASICS and the magnitude of its promotion, those assertions have not, as was noted by the Board of Appeal, been proven.
53 In the absence of other supplementary data or additional evidence, the Board of Appeal did not err in law in finding that the applicant had not established that the mark for which registration was sought had become distinctive through its use in the Community for the goods in question, including acrylic paints and artists’ varnishes, before the application for registration was filed.
54 It is apparent from all the foregoing that the third plea, alleging infringement of Article 7(3) of Regulation No 40/94, must be rejected as unfounded.
55 It follows that the action must be dismissed in its entirety.
Costs
56 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 in accordance with the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders ColArt/Americas, Inc. to pay the costs.
Legal | Wiszniewska-Białecka | Moavero Milanesi |
Delivered in open court in Luxembourg on 12 September 2007.