JUDGMENT OF THE COURT OF FIRST INSTANCE (Sixth Chamber)
10 October 2008 (*)
(Community trade mark – Application for registration of Community word mark LIGHT & SPACE – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)
In Case T‑224/07,
Imperial Chemical Industries plc, established in London (United Kingdom), represented initially by S. Malynicz, barrister, and V. Chandler, solicitor, and subsequently by S. Malynicz and J. Bainbridge and K. Briggs, solicitors,
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 First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 30 March 2007 (Case R 1631/2006-1) concerning registration of the sign LIGHT & SPACE as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Sixth Chamber),
composed of A.W.H. Meij (Rapporteur), President, V. Vadapalas and E. Cremona, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 22 June 2007,
having regard to the response lodged at the Court Registry on 21 September 2007,
having regard to the altered composition of the Chambers of the Court of First Instance,
having regard to the designation of another judge to complete the Chamber as one of its members was prevented from attending,
further to the hearing on 18 June 2008,
gives the following
Judgment
Background to the dispute
1 On 20 June 2006 the applicant filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘the Office’) under 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 trade mark application concerned the word mark LIGHT & SPACE.
3 The goods in respect of which registration of the trade mark was sought fall within 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: ‘Paints, varnishes, lacquers; driers, including curing driers, thinners, colouring matters, all being additives for paints, varnishes or lacquers; preservatives against rust and against deterioration of wood; priming preparations (in the nature of paints); wood stains’.
4 By decision of 24 October 2006 the examiner rejected the application for registration on the basis of Article 7(1)(b) of Regulation No 40/94, on the ground that the trade mark applied for was devoid of any distinctive character.
5 On 12 December 2006 the applicant filed an appeal against the examiner’s decision under Article 59 of Regulation No 40/94.
6 By decision of 30 March 2007 (‘the contested decision’) the First Board of Appeal of the Office dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. The Board considered, essentially, that the relevant public will perceive the sign LIGHT & SPACE as a promotional message intended to draw attention to the positive aspects of the applicant’s goods, rather than as an indication of the commercial origin of those goods.
Forms of order sought by the parties
7 The applicant claims that the Court should:
– annul the contested decision;
– order the Office to pay the costs.
8 The Office contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Arguments of the parties
9 The applicant puts forward, essentially, a single plea in law, alleging that there was an infringement of Article 7(1)(b) of Regulation No 40/94.
10 First, the applicant submits that the Board of Appeal was wrong to consider that the sign in question could be perceived as an advertising slogan, an indication of quality or an incitement to purchase. In that regard, the applicant claims that without adding supplementary words or concepts to the sign LIGHT & SPACE, designed to interpret it and change its meaning, the relevant public, that is the English-speaking public, will not perceive the trade mark applied for as an advertising slogan. According to the applicant, the Board of Appeal converted the requested sign into a promotional message by adding to it three distinct concepts, ‘reflection’ or ‘refraction’ of light, ‘interior’ space and ‘comfort’, and interpreted the sign in question as suggesting ‘space by light’ rather than ‘light and space’. The addition of those concepts completely changes the meaning of the sign LIGHT & SPACE. According to the applicant, there is no link whatsoever between the words ‘light’ and ‘space’.
11 The applicant also submits that the sign in question lacks the normal structure, grammar, syntax and vocabulary of an advertising slogan. Advertising slogans are generally longer than the sign in question (Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179 and Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915), since they often contain a verb, adjective or adverb in order to describe and promote the goods or services (Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235) or to incite the consumer to do something (T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411). Moreover, contrary to what the Board of Appeal asserted, the ordinary rules of grammar do not apply in the present case, given that the trade mark applied for consists exclusively of two words and a symbol connecting them.
12 Second, the applicant claims that the Board of Appeal failed to consider whether the trade mark applied for could act as an indication of origin. According to the applicant, the lack of any distinctive character cannot be inferred from the mere fact that the mark applied for has a promotional meaning (LIVE RICHLY, paragraph 66). The applicant submits that the Board of Appeal failed to provide any reason why the promotional or laudatory characteristics of the sign prevent the relevant public from knowing the origin of the product.
13 If the Board of Appeal had carried out such an examination, it would have had to conclude, according to the applicant, that the combination of the words ‘light’ and ‘space’, even if each of those two words had a link to the goods in question, could easily be memorised as a trade mark, given that the sign in question had only an indirect promotional meaning and that it was not a common advertising slogan. The applicant next submits that it follows from the judgment in Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 40, that any perceptible difference between the word combination submitted for registration and the terms used in common parlance is apt to confer a distinctive character on that word combination, enabling it to be registered as a trade mark. Furthermore, it follows from the wording of Article 7(1)(b) of Regulation No 40/94 that a low degree of distinctive character is all that is needed to reject the absolute ground for refusal provided for therein. Consequently, the combination of the two words cannot be regarded as devoid of any distinctive character (Case T‑360/00 Dart Industries v OHIM (UltraPlus) [2002] ECR II‑3867).
14 Third, referring to Case C‑329/02 P SAT.1 v OHIM [2004] ECR I‑8317, the applicant submits that the Board of Appeal erred with regard to the assessment of the sign taken as a whole and of its constituent elements. The applicant points out, in that regard, that according to the settled case-law of the Court, the distinctive character of a word mark must always depend on an appraisal of all the terms which make up the sign (Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraphs 40 and 41, and Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 99 and 100). According to the applicant, although the word ‘light’ can be regarded as devoid of any distinctive character, because it is capable of being used for certain kinds of paint, the same cannot be said of the other elements of the sign. The word ‘space’ is not descriptive of any of the goods falling within Class 2. In addition, even if that word could be considered devoid of any distinctive character, none the less the sign taken as a whole is distinctive.
15 Fourth, the applicant contests the Board of Appeal’s statement that the proposed sign must be unusual or out of the ordinary in relation to the goods in question in order to be regarded as having a distinctive character. According to the applicant, the absence of any distinctive character cannot be inferred from the simple fact that the mark applied for does not look unusual or striking (Case T‑87/00 Bank für Arbeit und Wirtschaft v OHIM (EASYBANK) [2001] ECR II‑1259, paragraph 39). Registration of a sign as a trade mark does not necessarily require a work of invention and is not founded on any element of originality or imagination, but depends on its ability to distinguish on the market the goods or services of the applicant for the trade mark from goods or services of the same type offered by competitors (SAT.1 v OHIM, paragraph 41, and Case T‑79/00 REWE‑ZENTRAL v OHIM (LITE) [2002] ECR II‑705, paragraph 30).
16 Fifth, the applicant points out that distinctive character must be assessed in relation to the goods or services in respect of which registration is sought. The applicant maintains that the Board of Appeal did not take sufficient account of the specific features of each of the products concerned. On the contrary, the Board considered distinctive character in relation to the goods collectively, without referring to the various products falling within class 2. In that regard, the applicant submits that the goods in respect of which registration of the sign is sought are of various kinds and that the sign LIGHT & SPACE can carry different meanings in relation to those goods. ‘Paints’ have different properties and purposes from ‘varnishes’ and ‘lacquers’, ‘wood stains’, ‘driers’, ‘curing driers’ and ‘preservatives against rust and deterioration of wood’. Even if it were possible to consider the sign in question to be devoid of any distinctive character in relation to paints, the same would not necessarily apply to other goods falling within Class 2, in relation to which consumers would not regard the sign applied for as a promotional slogan. According to the applicant, it would be absurd to claim that priming preparations contribute to a feeling of light and space.
17 The Office does not accept that the action is well founded.
Findings of the Court
18 Under Article 7(1)(b) of Regulation No 40/94 ‘trade marks which are devoid of any distinctive character’ are not to be registered. Under Article 7(2) of Regulation No 40/94 ‘Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
19 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, thus enabling the public concerned to repeat the experience of purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services in question (LITE, paragraph 26, and Mehr für Ihr Geld, paragraph 24). That applies, in particular, to signs commonly used in trade for the marketing of the goods or services concerned (LIVE RICHLY, paragraph 65) or 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).
20 According to the case-law, 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 only distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94, however, 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 which have a different commercial origin (LIVE RICHLY, paragraph 67).
21 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicate to the consumer a characteristic of the goods or service which, whilst not specific, represents promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or service (REAL PEOPLE, REAL SOLUTIONS, paragraphs 29 and 30, and Case T‑128/07 Suez v OHIM (Delivering the essentials of life), not published in ECR, paragraph 20).
22 Accordingly distinctive character must be assessed, first, in relation to the goods or services in respect of which registration is applied for, and secondly in relation to the perception of it by the relevant public, consumers who are reasonably well informed and reasonably observant and circumspect (see, by analogy, Case T‑302/03 PTV v OHIM (map & guide) [2006] ECR II‑4039, paragraph 41).
23 In the present case, it must, first, be noted that the Board of Appeal’s assessment that the relevant public includes English‑speaking average consumers and professionals, or even a public which is not English‑speaking but has a basic grasp of the English language, has not been challenged.
24 As regards the first ground of complaint, alleging that the Board of Appeal erred by considering that the sign in question could be perceived as an advertising slogan, an indication of quality or an incitement to purchase, it must be observed that the Board of Appeal took the view that the combination of the words ‘light’ and ‘space’ stressed the clear relationship between light and space and that, since the message conveyed by that expression vis-à-vis goods covered by the mark applied for is one to which the relevant public is accustomed, the consumer would be led to understand that ‘the goods in question help to reflect the light around the interior spaces making them appear more spacious and therefore comfortable’.
25 The Board of Appeal therefore held that the relevant public would perceive the sign LIGHT & SPACE as a promotional laudatory message intended to highlight positive aspects of the goods covered by the mark applied for.
26 The applicant’s arguments do not invalidate that assessment. First, the argument that the Board of Appeal’s interpretation, using additional concepts, of the expression LIGHT & SPACE arbitrarily altered its meaning must be rejected. The Board of Appeal did no more than attempt to define the relationship which, in the minds of consumers, exists between light and space, in order to clarify the content of the expression in question and, thereby, to state the reasons for the finding that that expression is primarily a promotional message about the qualities inherent in the goods concerned.
27 Contrary to what is claimed by the applicant, the fact that, for the purposes of stating the reasons for its decision, the Board of Appeal uses additional words or concepts in order to clarify the content of the expression LIGHT & SPACE does not mean that the message contained is not immediately understandable by the relevant public.
28 Next, leaving aside the fact that it is far from established, the claim that the sign in question lacks the normal structure, grammar, syntax and vocabulary of a promotional formula would not, even hypothetically, affect the Board of Appeal’s finding that the sign conveys a message which is clear and directly understandable as to the properties of the goods covered by the mark applied for and will immediately be perceived by consumers as a promotional message.
29 In light of the foregoing, it cannot be held that the Board of Appeal erred in deciding that the mark applied for will be perceived first and foremost by the relevant public as a promotional message, rather than as an indication of the commercial origin of the goods.
30 As regards the second ground of complaint, alleging that the Board of Appeal failed to consider whether the trade mark applied for could act as an indication of origin, suffice it to note that the Board of Appeal stated, in paragraphs 20 and 21 of the contested decision, that the sign in question conveyed to consumers specific information concerning the characteristics of the goods. It is clear therefore that the Board of Appeal considered, in the absence of any additional distinctive elements, that the sign was descriptive of certain properties of the goods covered by the mark and that it would be immediately perceived as a promotional message, rather than as an indication of the commercial origin of the goods concerned.
31 It is therefore incorrect to say that the absence of distinctive character was inferred from the mere fact that the mark applied for had a promotional meaning. That the sign lacks distinctive character follows from the finding that the sign will not immediately be perceived as indicating the commercial origin of the goods, but as conveying a promotional message. The applicant offers no evidence to demonstrate any error on the part of the Board of Appeal on that point. It must be pointed out, in that regard, that the circumstance put forward by the applicant that the sign is easy to remember is not, in itself, sufficient to give it distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
32 As regards the third ground of complaint, alleging that the Board of Appeal committed errors in its assessment of the distinctiveness of the sign taken as a whole and of its constituent elements, it must be remembered that, as regards a trade mark comprising words and a typographical sign, the possible distinctiveness of each of those words or components, taken separately, may be examined, in part, but must, in any event, depend on examination of the whole which they make up. 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 (SAT.1 v OHIM, paragraph 28; see also, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR II‑0000, paragraph 41).
33 The Board of Appeal considered that, taken as a whole, the combination of the words ‘light’ and ‘space’, linked by an ‘&’, stressed the relationship which exists between light and space and would be perceived as a promotional laudatory message, to the effect that the goods covered by that mark help to create a feeling of light and spaciousness. Accordingly, although the word ‘space’, taken in isolation, is not descriptive of any of the goods covered by the mark applied for, nevertheless, when assessed as a whole, the sign in question indicates to the relevant public that the goods covered have the particular quality of creating a luminous and spacious ambiance. It follows that the Board of Appeal did not commit any error of assessment by holding that, taken as a whole, the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
34 As regards the fourth ground of complaint, alleging that the absence of any distinctive character cannot be inferred from the mere fact that the mark applied for does not look unusual or striking, it must be pointed out that the assertion, in paragraph 22 of the contested decision, that there is nothing unusual or out of the ordinary in combining the two words ‘light’ and ‘space’, does not, in itself, lead the Board of Appeal to conclude that there is no distinctive character. The Board considers, in the same paragraph 22 of the contested decision, that the average English‑speaking consumer will immediately perceive that the proposed sign is a promotional formula establishing a clear factual and objective link between the message expressed by the sign and the goods in question, and concludes, in paragraph 23 of the contested decision, that, since the mark applied for functions first and foremost as an incitement to the relevant public to purchase the goods in question, there is no reason to believe that the relevant public will see it as an indication of the commercial origin of those goods. Contrary to what is claimed by the applicant, it is therefore not the fact, as such, that the sign contains nothing unusual or out of the ordinary which leads the Board of Appeal to the conclusion that the sign proposed is devoid of any distinctive character, but the fact that the sign functions as an incitement to purchase, by indicating certain characteristics of the goods concerned.
35 As regards, lastly, the fifth ground of complaint, alleging that the Board of Appeal assessed distinctive character in relation to the goods collectively but did not take sufficient account of the specific features of each of the products covered, it must be recalled that examination of the grounds for refusal laid down in Article 7 of Regulation No 40/94 must be carried out in relation to each of the goods for which trade mark registration is sought. Furthermore, the decision of the Office refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods (see, to that effect and by analogy, Case C‑239/05 BVBA Management, Training en Consultancy [2007] ECR I‑1455, paragraph 34). None the less, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground of refusal is given for a category or group of goods or services (BVBA Management, Training en Consultancy, paragraph 37).
36 In paragraphs 17 and 18 of the contested decision, the Board of Appeal held that all the goods concerned were preparations intended to be applied to a surface and were used to shape light and impart luminosity in interior spaces. According to the Board of Appeal, it is highly improbable that the relevant public will not immediately grasp the message that the goods in question help to reflect light around interior spaces, making them therefore appear more spacious and comfortable.
37 It is necessary to examine whether that ground of refusal can be applied to each of the goods in Class 2 covered by the application for trade mark registration. As regards, first, ‘paints, varnishes, lacquers’, the reasons stated by the Board of Appeal are particularly relevant to those goods, which are in fact likely to possess the properties lauded by the sign LIGHT & SPACE. In that regard, besides the fact that varnishes and lacquers can readily be regarded as goods similar to paints, they are also likely to perform the functions of paint, particularly because they also can contain colour and reflect light. The expression LIGHT & SPACE will accordingly be perceived in the same way vis-à-vis varnishes and lacquers.
38 As regards, next, ‘driers including curing driers, thinners, colouring matters, all being additives for paints, varnishes or lacquers’ those goods can be placed in the same category as paints, varnishes or lacquers, in so far as they are designed to be added to them. Consequently, it must be held that the reasons stated by the Board of Appeal are equally relevant to those goods. Similarly, there is no need to distinguish between ‘priming preparations (in the nature of paints)’ and ordinary paints, in so far as priming preparations contribute to the effect created by the paint finally applied to the surface and are goods similar to paint.
39 As regards, lastly, preservatives against rust and against deterioration of wood, and wood stains, it must be pointed out that, although intended for specific purposes, it cannot be excluded that such goods and paints perform similar functions, in so far as they are also likely to contain colour. Such goods can therefore also contribute to reflecting light around interior spaces and to make them, as a result, more spacious. Since the description of those goods in the trade mark registration application does not exclude such a function and, in addition, those goods can be regarded as similar to paints, the reason stated, that the sign LIGHT & SPACE will be perceived by the public concerned as a promotional laudatory formula rather than as an indication of the commercial origin of those goods, must be considered to be equally applicable to them.
40 Consequently, the Board of Appeal did not commit any error in considering that the perception of the sign LIGHT & SPACE by the relevant public would be the same in respect of all of the goods covered by the application for trade mark registration, and could therefore provide an overall statement of reasons relating to all of the goods concerned.
41 In light of all of the foregoing considerations, it must be concluded that the Board of Appeal was correct to hold that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. The action must therefore be dismissed.
Costs
42 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, the applicant must be ordered to pay the costs, as applied for by the Office.
On those grounds,
THE COURT OF FIRST INSTANCE (Sixth Chamber)
hereby:
1. Dismisses the action.
2. Orders Imperial Chemical Industries plc to pay the costs.
Delivered in open court in Luxembourg on 10 October 2008.