JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
20 January 2009 (*)
(Community trade mark – Application for the Community word mark OPTIMUM – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 – Obligation to state reasons – Examination of the facts of OHIM’s own motion – Articles 73 and 74(1) of Regulation No 40/94)
In Case T‑424/07,
Pioneer Hi-Bred International, Inc., established in Johnston, Iowa (United States), represented by G. Würtenberger, R. Kunze and T. Wittmann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 September 2007 (Case R 288/2007–2), concerning an application for registration of the word sign OPTIMUM as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and S. Soldevila Fragoso, Judges,
Registrar: K. Pocheć, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 20 November 2007,
having regard to the response lodged at the Registry of the Court of First Instance on 6 February 2008,
further to the hearing on 21 October 2008,
gives the following
Judgment
Background to the dispute
1 On 10 February 2006, the applicant, Pioneer Hi-Bred International, 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 mark in respect of which registration was sought is the word sign OPTIMUM.
3 The goods in respect of which registration was sought are in Class 1 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended (‘the Nice Agreement’), and correspond to the following description: ‘Biological material namely plant tissue genes and gene-sequences for agricultural purposes’.
4 By decision of 25 January 2007, the examiner refused that application, pursuant to Article 7(1)(b) and (c) of Regulation No 40/94.
5 The examiner observed, essentially, that the mark applied for could not be registered because it was devoid of any distinctive character and consisted exclusively of signs or indications which may serve, in trade, to designate the main characteristics of the goods, or of signs or indications which have become customary.
6 On 15 February 2007, the applicant filed an appeal against the examiner’s decision with OHIM.
7 By decision of 11 September 2007 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal pursuant to Article 7(1)(b) of Regulation No 40/94, on the ground that the sign in question was devoid of the minimal distinctive character required for registration. As a result, the Board of Appeal considered that it was not necessary for it to examine further whether the grounds for refusal set out in Article 7(1)(c) of Regulation No 40/94 also precluded registration of the mark applied for.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
9 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
The reference made by the applicant to the written pleadings it submitted before OHIM
10 The applicant refers, in paragraph 58 of its application, to the facts and arguments put forward in the application and the appeal proceedings before OHIM, in particular in its written pleadings of 1 December 2006 and 25 May 2007, and asks the Court to take them into account for the purposes of the present proceedings.
11 In so far as the applicant refers generally, in paragraph 58 of the application, to the arguments set out in the written pleadings submitted during the administrative procedure before OHIM, such a reference does not satisfy the requirements of Article 44(1)(c) of the Rules of Procedure of the Court of First Instance and cannot, therefore, be taken into account (see, to that effect, Case T-316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II‑1951, paragraph 23 and the case-law cited).
Law
12 In support of its action, the applicant relies, in essence, on four pleas in law, alleging infringement of, first, Article 7(1)(b) and (2) of Regulation No 40/94, secondly, Article 7(1)(c) of that regulation, thirdly, Article 74 of that regulation and, fourthly, Article 73 of that regulation.
13 Given that the arguments expounded by the applicant under the third and fourth pleas overlap in part, those pleas are joined for the purpose of analysis in the present judgment.
The first plea
Arguments of the parties
14 The applicant claims that the Board of Appeal infringed Article 7(1)(b) and (2) of Regulation No 40/94 by failing to take proper account of the fact that the goods covered by the mark applied for address a specialised public.
15 In that regard, the conclusion of the Board of Appeal based on its findings in paragraphs 17 to 28 of the contested decision, according to which the word ‘optimum’ also has a laudatory meaning in the specific field of business concerned, is an assumption which is not supported by the specific facts. The sources cited by the examiner did not reveal any use of the word ‘optimum’ that would have supported the conclusion that the mark applied for is used or may be used as an ‘equivalent’ for the relevant goods. Equally, the applicant submits that the Board of Appeal’s assertion that the laudatory meaning of the word ‘optimum’ can immediately and without any thought be understood by the relevant trade circles does not state anything regarding their perception of that word in relation to the goods concerned.
16 The recourse had, in paragraph 19 of the contested decision, to assumptions and speculations as to how the relevant trade circles view the sign at issue in relation to the goods in question shows that the message of the sign is not immediately and without further thought intelligible to specialised scientists.
17 Lastly, if it is admitted, as by the Board of Appeal, that the sign at issue does not enable the consumer, due to its generic meaning, to imagine to what type of goods or services it refers, it is very difficult not to acknowledge that the mark applied for will be regarded as an indication of origin when it appears on the packaging of some of the goods covered by the trade mark application.
18 OHIM contends that this plea should be rejected.
Findings of the Court
19 Under Article 7(1)(b) of Regulation No 40/94 ‘trade marks which are devoid of any distinctive character’ are not to be registered. Furthermore, Article 7(2) of that regulation states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
20 Signs which are devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 are those which are incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, enabling the consumer who acquired the goods or services covered by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-0000, paragraph 87 and the case-law cited). That is true, in particular, for signs which are commonly used in the marketing of the goods or services concerned (Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 65) or those which are capable of being used in that manner (Case T-216/02 Fieldturf v OHIM (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS) [2004] ECR II-1023, paragraph 34).
21 A sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (Case T-360/00 Dart Industries v OHIM (UltraPlus) [2002] ECR II-3867, paragraph 43).
22 The applicant’s argument that the mark applied for is distinctive must be examined in the light of those considerations.
23 First, the Board of Appeal correctly defined the relevant public in the present case in stating that the biological material covered by the trade mark application is intended for a specialised public consisting of scientists specialised in the field of genetic engineering. Furthermore, that is not disputed by the parties. The distinctive character of the mark applied for must therefore be assessed by taking into account the assumed perception of a specialised consumer.
24 Secondly, the Board of Appeal inferred the lack of distinctiveness in the present case from the finding that ‘optimum’ is laudatory and from the fact that it is a common word which can be used by any undertaking for the purpose of advertising its goods or services, including the relevant goods in Class 1 of the Nice Agreement. ‘Optimum’ can be used as an indication of a promotional nature. Derived from Latin, but also in common use in most Community languages, it is one of the category of superlatives meaning ‘most favourable or advantageous’ or ‘best’. The Board of Appeal was therefore correct in its finding that it is a banal and widespread laudatory term.
25 Furthermore, the word ‘optimum’ is used in its normal grammatical form and is not perceptibly different from a lexically correct construction (see, by contrast, UltraPlus, paragraph 47).
26 Lastly, although it is true, as the Board of Appeal pointed out in paragraph 21 of the contested decision, that, due to its generic meaning which tends to exalt in an unspecified manner the nature, function, quality or one of the qualities of any product, the sign OPTIMUM does not enable the consumer to imagine to what type of goods it refers, the fact nevertheless remains, as the Board of Appeal also correctly stated in the same paragraph of the contested decision, that, precisely because it is commonly used in everyday language, as well as in trade, as a generic laudatory term, that word sign cannot be regarded as appropriate for the purpose of identifying the commercial origin of the goods which it designates and, therefore, of performing the essential function of a trade mark (Case T-242/02 Sunrider v OHIM (TOP) [2005] ECR II‑2793, paragraph 95).
27 The fact that the goods covered by the mark applied for are intended for a specialised public in no way alters that assessment, given that the level of attention of such a public, which is generally high, is relatively low when it comes to promotional indications (see, to that effect, Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II-5179, paragraph 24).
28 It is apparent from the foregoing considerations that the Board of Appeal did not make an error of assessment in concluding that the mark applied for is devoid of any distinctive character.
29 That conclusion cannot be called in question by the other arguments put forward by the applicant.
30 First, as regards the argument that the Board of Appeal should also have established the laudatory meaning of the word ‘optimum’ in the specific field of business, it must be pointed out that, in stating, in paragraph 23 of the contested decision, that that word relates to any kind of goods including the goods applied for in Class 1 of the Nice Agreement, the Board of Appeal established to the requisite legal standard that the word at issue has no distinctive character in relation to the goods covered by the trade mark application.
31 Furthermore, in that connection, and contrary to what is put forward by the applicant, it is not for the Board of Appeal to establish that the word ‘optimum’ is used or may be used as an ‘equivalent’ for the goods in question. Although such evidence would, in certain circumstances, make it possible to preclude, on the basis of Article 7(1)(c) of Regulation No 40/94, the registration of a sign describing a product or a service, the fact remains that it does not make it possible to determine whether a mark is capable of guaranteeing to the relevant public the identity of the origin of the product designated by that mark. Consequently, such evidence is irrelevant in the context of Article 7(1)(b) of that regulation (see, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR I-0000, paragraphs 61 and 62).
32 Secondly, the argument that the Board of Appeal based its decision on assumptions and speculations by finding, in the contested decision, first, that the laudatory term ‘optimum’ is likely to produce in the mind of consumers the idea that the goods in question are of optimum quality or allow optimum results to be obtained and, secondly, that the specialised public might think that the goods in question contain an optimum gene expression, must be rejected on the same grounds. Such considerations, which come within the assessment under Article 7(1)(c) of Regulation No 40/94, are not relevant in the context of Article 7(1)(b) of that regulation.
33 Thirdly, as regards the applicant’s argument set out in paragraph 17 above, the applicant again confuses the absolute ground for refusal based on the sign’s lack of distinctive character and that based on the descriptiveness of the sign. Although the consideration underlying its argument could in certain circumstances be relevant in the assessment under Article 7(1)(c) of Regulation No 40/94, it is not, however, relevant in the context of Article 7(1)(b) of that regulation. The generic meaning of the sign does not make it possible for consumers, even specialised ones, to associate the sign with specific goods, with the result that the sign is not able to fulfil the essential function of a trade mark, namely that of guaranteeing the identity of the origin of the marked goods to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods from those which have a different origin (Case C-329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraph 23, and Case C-37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 60).
34 It follows from the above that the first plea must be rejected as unfounded.
The second plea
Arguments of the parties
35 The applicant claims that, by failing to examine further the grounds on which the examiner based his decision to refuse the sign at issue pursuant to Article 7(1)(c) of Regulation No 40/94, the Board of Appeal infringed the aforementioned provision.
36 OHIM contends that this plea should be rejected.
Findings of the Court
37 With regard to this plea, it must be borne in mind that Article 7(1) of Regulation No 40/94 makes it clear that it is sufficient that one of the absolute grounds for refusal referred to in that paragraph applies for a sign not to be registrable as a Community trade mark (see judgment of 21 May 2008 in Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraph 41, and the case-law cited).
38 Consequently, there is no need to adjudicate on the second plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94.
The third and fourth pleas
Arguments of the parties
39 The applicant maintains that, by failing to substantiate the contested decision with evidence of use of the mark applied for as a laudatory term in the relevant field of business and by, instead, imposing the burden of proof of the distinctive character of the sign at issue upon the applicant, the Board of Appeal infringed Article 74 of Regulation No 40/94, according to which the Office is required to examine the relevant facts of its own motion, which may lead it to apply an absolute ground for refusal. The applicant submits that it is for OHIM to show that the mark applied for is devoid of any distinctive character. The Board of Appeal should have substantiated the contested decision with facts and evidence supporting the conclusion that the term ‘optimum’ had to be considered to be insufficiently distinctive in relation to the goods concerned. Given that the members of the Board of Appeal are average consumers, they are not able to assess, on the basis of their own experience, the way in which the mark applied for is understood by the relevant public.
40 The applicant also claims that, in failing to substantiate the contested decision with substantial evidence of the alleged fact that the trade circles addressed by the goods at issue will understand the mark applied for as a laudatory expression, but, by contrast, relying only on the common sense and common use of that term in all fields of trade or activity and by imposing upon the applicant the onus of proving the distinctive character of the mark applied for in the relevant field of business, the Board of Appeal failed to comply with the obligation under Article 73 of Regulation No 40/94 to state the reasons for its decision. Furthermore, the Board of Appeal failed to comply with the obligation to base its decision solely on reasons and evidence on which the applicant had had an opportunity to present its comments, since at no stage of the proceedings had the applicant had a chance to comment on the fact that the Board of Appeal transferred the meaning of the term ‘optimum’, as possibly used in fields of business other than that concerned in the present case, to the field of the goods covered by the trade mark application.
41 OHIM contends that these pleas should be rejected.
Findings of the Court
42 First, under Article 74(1) of Regulation No 40/94, OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark (Case C‑25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 50).
43 Secondly, whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, that is not the case where they rely on facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see, to that effect, Storck v OHIM, paragraph 51, and Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 29). An applicant for a trade mark against whom the competent bodies of OHIM rely on such well-known facts may still challenge the accuracy of those facts before the Court of First Instance (Storck v OHIM, paragraph 52).
44 Lastly, if they are minded to refuse the application for a trade mark on the basis of an absolute ground of refusal, the competent bodies of OHIM are required to state the reasons for their decision pursuant to the first sentence of Article 73 of Regulation No 40/94. That statement of reasons has two purposes: to allow interested parties to know the justification for the measure adopted so as to enable them to protect their rights and to enable the Community judicature to review the legality of the decision (see Mozart, paragraph 43, and the case-law cited).
45 In the present case, first, it is apparent from the analysis carried out in the context of the first plea that the Board of Appeal established to the requisite legal standard that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 in relation to the goods concerned, by stating, in paragraph 23 of the contested decision, that the mark, as a laudatory expression, relates to any kind of goods including the goods applied for in Class 1 of the Nice Agreement. That statement of reasons is sufficient, first, to allow the applicant to know the justification for the measure adopted so as to enable it to protect its rights and, secondly, to enable the Court to review the legality of the contested decision.
46 Secondly, contrary to what the applicant maintains, it is not the task of the bodies of OHIM to adduce further evidence in order to establish that the term at issue is actually used as a laudatory expression in the relevant field of business or in relation to the goods concerned. Since the applicant claims that the trade mark applied for is distinctive, despite the analysis of the Board of Appeal based on clear and convincing reasoning, it is for the applicant to provide specific and substantiated information to show that the trade mark applied for has an intrinsic distinctive character, since it is better placed to do so, given its thorough knowledge of the market (see Case T-129/04 Develey v OHIM (shape of a plastic bottle) [2006] ECR II-811, paragraph 21, and the case-law cited).
47 Thirdly, as regards the fact that the applicant was not heard by the Board of Appeal on the transfer of the meaning of the term ‘optimum’, as possibly used in fields of business other than that concerned in the present case, to the specific field of the goods covered by the trade mark application, the Board of Appeal referred only to the general meaning of the term in question irrespective of its use in specific fields of business. As the general meaning of that term is a well-known fact, the Board of Appeal was not, in accordance with the case-law cited in paragraph 43 above, obliged to give the applicant a chance to comment on the transfer of that meaning to the specific field of the goods covered by the trade mark application. That is all the more true in the present case since the applicant has not, at any point, established, or even claimed, that the term may have, with regard to the goods covered by the trade mark application, a meaning different from its general meaning.
48 Fourthly, the applicant’s argument that the members of the Board of Appeal may not base their decision on their own experience must be rejected. As has already been found above, the members of the Board of Appeal based their decision not on their personal experience but on a well-known fact.
49 It follows that the Board of Appeal did not infringe Article 73(1) or Article 74 of Regulation No 40/94 and thus the third and fourth pleas must be rejected as unfounded.
Costs
50 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 OHIM has applied for costs against the applicant and the latter has been unsuccessful, the applicant must be ordered to pay the costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Pioneer Hi-Bred International, Inc. to pay the costs.
Pelikánová | Jürimäe | Soldevila Fragoso |
Delivered in open court in Luxembourg on 20 January 2009.
[Signatures]