JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
26 November 2008 (*)
(Community trade mark – Application for the Community word mark ANEW ALTERNATIVE – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 )
In Case T‑184/07,
Avon Products, Inc., established in New York, New York (United States), represented by C. Heitmann-Lichtenstein and U. Stelzenmüller, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Laitinen and P. Bullock, and subsequently by G. Schneider, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 22 March 2007 (Case R 1471/2006‑2), concerning an application for registration as a Community trade mark of the word mark ANEW ALTERNATIVE,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and S. Soldevila Fragoso, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 25 May 2007,
having regard to the response lodged at the Court Registry on 18 July 2007,
further to the hearing on 17 June 2008,
gives the following
Judgment
Background to the dispute
1 On 24 March 2005 the applicant, Avon Products, Inc., 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.
2 The application related to the registration of the word sign ANEW ALTERNATIVE.
3 The goods in respect of which registration was sought are in Class 3 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘soaps, perfumery, essential oils, cosmetics, hair lotions’.
4 By decision of 15 September 2006, the examiner refused registration of the mark applied for on the ground that it was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
5 On 15 November 2006 the applicant filed an appeal against the examiner’s decision.
6 By its decision of 22 March 2007 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. Confirming the grounds adopted by the examiner, the Board of Appeal held that the mark applied for would be perceived by the relevant consumer, namely the average English-speaking consumer, as meaning ‘a new alternative’, a combination of ordinary terms which makes up an advertising message relating to the goods concerned, particularly given the phonetic identity of the two expressions. The Board of Appeal also pointed out that the registration of national marks containing the element ‘anew’ did not bind OHIM and that it had not been established that the relevant public would see the mark applied for as a sub-brand of the ANEW family of marks.
Forms of order sought
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 application;
– order the applicant to pay the costs.
Law
9 The applicant relies on three pleas in law: (i) infringement of Article 7(1)(b) of Regulation No 40/94; (ii) infringement of Article 7(1)(c) of that regulation; and (iii) infringement of the principle of equal treatment.
10 OHIM contests the merits of the three pleas relied on. It also submits that Annexes A 19 to A 26 to the application relating to the reputation of the mark ANEW are inadmissible.
Admissibility of the documents produced for the first time before the Court
11 Since the purpose of an action before the Court 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. 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). Accordingly, the documents contained in Annexes A 19 to A 26 to the application, produced for the first time before the Court of First Instance, are inadmissible.
The first plea: infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
12 The applicant submits that the mark applied for is not devoid of distinctive character but that, by contrast, it enables the relevant public to identify the commercial origin of the goods concerned and to distinguish those goods from goods of competing undertakings. It takes the view that the Board of Appeal failed to take account of the overall impression produced by the mark applied for in separating, in its analysis, ‘anew’ into two elements, namely ‘a’ and ‘new’, contrary to the relevant rules laid down by case-law.
13 The word ‘anew’, it argues, is not a lexical invention resulting from the simple juxtaposition of the terms ‘a’ and ‘new’, but has a completely different meaning, namely ‘in a new way’ or ‘again’ and, therefore, an independent function. The impression given by that term is therefore sufficiently far removed from that created by the elements of which it is composed, and it is noticed by the relevant consumer in the mark applied for. Similarly, the grammatically incorrect use of the element ‘anew’ in the mark applied for renders it surprising and fanciful.
14 According to the applicant, the Board of Appeal did not adduce any evidence to substantiate its conclusion that the relevant consumers will split the element ‘anew’ into two separate elements and will therefore perceive the mark applied for as ‘a new alternative’. Visually, the mark applied for will immediately be perceived as consisting of two words, namely ‘anew’ and ‘alternative’. Similarly, phonetically, the two terms can be distinguished by consumers. Furthermore, contrary to the Board of Appeal’s findings in the contested decision, the phonetic aspect is irrelevant in the present case.
15 First, the judgments of the Court of Justice in Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619 and in Case C-265/00 Campina Melkunie [2004] ECR I-1699 are not applicable, as they interpret the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 40/94, and not that laid down in Article 7(1)(b), which is in issue in the present case. Furthermore, the signs in issue in those judgments are visually and phonetically identical, unlike the mark applied for in the present case.
16 Second, it follows from OHIM’s guidelines on examining trade marks that, as regards the descriptive character of signs under Article 7(1)(c) of Regulation No 40/94 and, by analogy, their distinctive character under Article 7(1)(b) of that regulation, a misspelling which is fanciful or striking, or which changes the meaning of the sign, is sufficient to ensure that the absolute grounds for refusal provided for by those provisions are not applied. Thus, the mere fact that the pronunciation of the mark applied for leads to a descriptive term does not preclude its registration.
17 The applicant also refers to the case-law relating to the application of Article 7(1)(c) of Regulation No 40/94, according to which, first, the relevant lexical and grammatical rules are useful in the analysis of a sign (Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 27) and, second, any perceptible difference between the sign and the descriptive terms is apt to confer distinctive character on the latter (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 40). The applicant submits that the application by analogy of those rules to the present case should have led the Board of Appeal to recognise the distinctive character of the mark applied for, which is a sign which does not follow the rules of English grammar and is, therefore, surprising, fanciful and unusual.
18 Likewise, the applicant continues, the large number of national and Community registrations that it has obtained for the term ‘anew’, whether alone or in combination with other elements, and for the sign ‘anew alternative’, is a useful indicator of the distinctive character of the mark applied for. The Board of Appeal ought to have given more weight to that fact, especially since a large number of the registrations concerned were carried out in English-speaking countries, particularly in the United Kingdom.
19 Lastly, the applicant relies on the reputation of the mark ANEW and the extent of the use of the term ‘anew’ as an element of several marks. It submits to the Court documents which it claims illustrate these matters.
20 OHIM disputes the merits of the applicant’s arguments.
Findings of the Court
21 Article 7(1)(b) of Regulation No 40/94 provides that trade marks which are devoid of any distinctive character are not to be registered. For a trade mark to possess distinctive character, 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. The distinctive character of a mark must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (Joined Cases C‑456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraphs 33 to 35).
22 Further, it must be observed that registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. A sign which fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94, however, only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 66).
23 Since, in this case, the goods covered by the mark applied for are everyday consumer items and the existence of the absolute ground for refusal referred to in this case was raised only with respect to one of the languages spoken in the Community, namely English, the distinctive character of the mark applied for must be determined by reference to the perception of the average English-speaking consumer.
24 It must also be observed that the goods covered by the mark applied for are sold in supermarkets, where visual communication takes precedence over oral communication, as well as in specialist shops, where the importance of those two means of communication is generally comparable, and by way of doorstep-selling, where the oral aspect is predominant. Consequently, the mark applied for will be used both in writing and orally.
25 Next, contrary to the applicant’s assertions, the rule laid down in the judgments in Koninklijke KPN Nederland and Campina Melkunie, that the registrability of a word mark which is intended to be heard as much as to be read is to be assessed as regards both the aural and the visual impression produced by it, is applicable by analogy to the present case. First, since that rule is generally concerned with the manner in which a word mark is perceived by the relevant public, its applicability is not limited to the absolute ground for refusal concerning the descriptive character of the sign at issue. Second, it also does not follow from the judgments cited above that the rule at issue merely refers to marks which produce the same impression visually and phonetically. In those circumstances, it must be held that, in order to avoid the application of the absolute ground for refusal laid down in Article 7(1)(b) of Regulation No 40/94, the mark applied for must have a distinctive character as regards both the aural and the visual impression which it produces (see, by way of analogy, Koninklijke KPN Nederland, paragraph 99, and Campina Melkunie, paragraph 40).
26 As the Board of Appeal stated, in paragraph 13 of the contested decision, the perception, on the phonetic level, by the relevant consumer of the mark applied for is the same as his perception of the sign ‘a new alternative’, since the combination of the elements ‘a’ and ‘new’ in ‘anew’ is not normally perceptible aurally, contrary to the applicant’s assertions. In those circumstances, the relevant consumer will attribute a specific conceptual content to the mark applied, namely ‘a new alternative’ and thus will not interpret it as ‘anew alternative’, a construction devoid of meaning. The sign ‘a new alternative’ will be perceived from the outset as an advertising slogan indicating to the consumer that the product or service concerned offers an alternative to the existing goods or services, and not as an indication of its commercial origin. Consequently, in accordance with the case-law set out in paragraph 22 above, the mark applied for is devoid of distinctive character and its registration is for that reason impermissible on the ground for absolute refusal laid down in Article 7(1)(b) of Regulation No 40/94.
27 The other elements relied on by the applicant are not capable of challenging that finding. Thus, as far as concerns, first, OHIM’s examination guidelines, it is clear from the foregoing that the rule in those guidelines relied on by the applicant is contrary to the interpretation by the Community judicature of Regulation No 40/94, which the applicant cannot override.
28 Second, as to the applicant’s reliance on the judgments in Procter & Gamble v OHIM and PAPERLAB, it is clear from the foregoing analysis that, phonetically, the mark applied for is identical to the slogan ‘a new alternative’. Consequently, there is no perceptible difference between the latter and the verbal elements of that slogan, which is at the same time in accordance with the rules of English grammar and devoid of distinctive character. Therefore, the abovementioned case-law is not capable of rebutting the conclusion that there is a lack of distinctive character in this case.
29 Third, as regards national, international and Community marks containing the term ‘anew’ relied on by the applicant, it must be borne in mind that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; and that it is self-sufficient and 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. Accordingly, OHIM and, if relevant, the Community judicature are not bound by a decision given in a Member State, which may, none the less, provide analytical support for the assessment of the registrability of a sign as a Community trade mark (Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 47, and Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 52). Similarly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards (STREAMSERVE, paragraph 66).
30 It should also be observed that a significant number of the marks relied on by the applicant are irrelevant to this case, since, unlike the mark applied for, they are not devoid of distinctive phonetic character. Furthermore, the applicant has simply mentioned the registrations that it has obtained and produced the relevant certificates, without specifying whether those registrations are based on inherent distinctive character or on that acquired by use, and also without providing further details regarding the opinion of the competent authorities as to the distinctive character of the combination of the words ‘anew alternative’ or similar words. Consequently, contrary to the applicant’s submissions, the evidence at issue cannot provide effective analytical support in the examination of the registrability of the mark applied for.
31 Fourth and lastly, it was stated in paragraph 11 above that the documents contained in Annexes A 19 to A 26 to the application, which constitute the only evidence put forward in support of the claim that the mark ANEW is well known and to demonstrate the previous use of that sign by the applicant, are inadmissible. That evidence cannot therefore be taken into consideration.
32 In the light of all of the foregoing, it must be held that, in so far as the mark applied for is devoid of any distinctive character, it cannot be registered by reason of the absolute ground for refusal laid down in Article 7(1)(b) of Regulation No 40/94. Accordingly, the Board of Appeal did not err in relying on that ground in order to refuse registration of the mark applied for, and the first plea must for that reason be rejected.
The second plea: infringement of Article 7(1)(c) of Regulation No 40/94
33 The applicant submits, ‘as a step of precaution’, that the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 40/94 is not applicable to the mark applied for. However, given that it is evident from the wording of Article 7(1) of Regulation No 40/94 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 29), there is no need to give a ruling on the second plea.
The third plea: infringement of the principle of equal treatment
34 The applicant takes the view that OHIM infringed the principle of equal treatment, first, by failing to comply with its guidelines on the examination of trade marks, according to which phonetic similarity is not relevant in the context of absolute grounds for refusal and, second, by failing to attach sufficient weight to Community and national trade mark registrations containing the elements ‘anew’ and ‘anew alternative’.
35 It must be observed that those two circumstances have already been relied on by the applicant in the context of the first plea and that, when examining the latter, the Court found that the Board of Appeal had not committed any error in that regard. Therefore, since the decisions concerning the registration of a sign as a Community trade mark that 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 (PAPERLAB, paragraph 39), those circumstances cannot be regarded as establishing an infringement of the principle of equal treatment.
36 Even assuming that in earlier decisions OHIM had incorrectly applied Regulation No 40/94 either by attaching undue weight to earlier registrations of signs covered by the applications for Community trade marks, or by applying the rule in its guidelines for the examination of trade marks relied on by the applicant, that fact is not capable of calling into question the lawfulness of the contested decision, since 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 (see, to that effect, STREAMSERVE, paragraph 67, and Case T-123/04 Cargo Partner v OHIM (CARGO PARTNER) [2005] ECR II-3979, paragraph 70).
37 Since, at the hearing, the applicant again put forward the same circumstances in support of its contention that essentially it could rely on a legitimate expectation that OHIM would observe its guidelines for the examination of trade marks and would publish the mark applied for, it must be observed that such a new plea is inadmissible under Article 48(2) of the Rules of Procedure, as the applicant did not even argue that reliance on the principle of the protection of legitimate expectations would be based on matters of law or fact which would come to light in the course of the procedure. In any event, even if it were admissible, such a plea would be unfounded inasmuch as a legitimate expectation cannot arise from conduct on the part of the administration which is inconsistent with Community rules (Case T-336/94 Efisol v Commission [1996] ECR II-1343, paragraph 36).
38 In the light of the foregoing, the third plea must be rejected and, therefore, the action must be dismissed in its entirety.
Costs
39 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 (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Avon Products, Inc. to pay the costs.
Pelikánová | Jürimäe | Soldevila Fragoso |
Delivered in open court in Luxembourg on 26 November 2008.
[Signatures]