ORDER OF THE COURT OF FIRST INSTANCE (First Chamber)
5 December 2007(*)
(Community trade mark – Application for a Community figurative mark representing a saw blade in the colour blue – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 – Action manifestly lacking any foundation in law)
In Case T‑127/06,
Kapman AB, established in Sandviken (Sweden), represented by R. Almaraz Palmero, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Mondéjar Ortuño, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 February 2006 (Case R 303/2004-2), refusing registration as a Community trade mark of a figurative mark in the colour blue representing a saw blade,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of J.D. Cooke, President, I. Labucka and M. Prek, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court of First Instance on 28 April 2006,
having regard to the response lodged at the Court Registry on 7 August 2006,
makes the following
Order
Background to the dispute
1 On 11 January 2002 the applicant submitted an application for a Community trade mark to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 application for registration concerned a figurative mark in the colour blue, corresponding to the pantone reference PMS 302U, reproduced below:
3 The product in respect of which registration was sought falls within Class 8 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. It has the following description: ‘Saw blades (for hand‑operated tools)’.
4 By letter of 10 April 2003, the examiner informed the applicant that the trade mark applied for did not comply with the conditions for registration required by Article 7(1)(b) of Regulation No 40/94, on the principal grounds, first, that the trade mark applied for was made up of a reproduction of a saw blade in the colour blue, secondly, that when used on the goods applied for in Class 8, the trade mark sought would not be seen as an indication of commercial origin and, lastly, that the colour blue did not in the present case constitute an element that was arbitrary, fanciful or imaginative.
5 By letter of 6 June 2003, the applicant challenged the examiner’s assessment and argued that the trade mark applied for did not represent a saw blade but a parallelogram with rounded corners and a piece missing in the upper right corner. The distinctiveness of the sign at issue, since the shape of saw blades is normally unlikely to vary, was sufficient to justify registration of the trade mark applied for, especially given the fact that that shape is combined with a specific colour of blue. In this respect, the applicant maintains that a colour in itself can be registered as a Community trade mark.
6 By decision of 1 March 2004, the examiner rejected the application for registration on the ground that the trade mark applied for represented a basic geometric figure without any striking feature and that the colour blue, far from being arbitrary, fanciful or imaginative, was, on the contrary, commonplace. The trade mark applied for could not therefore be an indication of commercial origin and, consequently, could not be registered, in accordance with Article 7(1)(b) of Regulation No 40/94.
7 On 23 April 2004, the applicant appealed against the examiner’s decision, setting out the grounds of that appeal in a supporting statement lodged on 29 June 2004. It claimed in substance that the shape of the sign applied for, together with its unique blue colour, made it inherently distinctive, and therefore registration could not be refused on the basis of Article 7(1)(b) of Regulation No 40/94. In addition, the presentation of the trade mark applied for in the form of a label would lead the consumer to perceive the mark as an indication of commercial origin.
8 By decision of 10 February 2006 (‘the contested decision’), the Second Board of Appeal dismissed that appeal as unfounded. It held, in substance, that the trade mark applied for, consisting of a label, copied to a large degree the shape of the goods to which it applies. Neither the specific features of the shape of the sign at issue nor its colour were sufficient to be an indication of origin in the perception of the relevant public, consisting of professionals and DIY enthusiasts.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs, including those relating to the procedure before the Board of Appeal.
10 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 Under Article 111 of the Rules of Procedure of the Court of First Instance, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court of First Instance may, by reasoned order, give a decision on it without taking further steps in the proceedings.
12 In the present case, the Court considers that is has sufficient information available to it from the documents in the file and has decided, pursuant to that article, to give a decision on the action by reasoned order without taking further steps in the proceedings.
13 In support of its appeal, the applicant is essentially putting forward three pleas. The first plea alleges infringement of Article 7(1)(b) of Regulation No 40/94. The second plea alleges infringement of the rules on the burden of proof. The third plea concerns a previous registration practice of OHIM and a judgment of the Court of First Instance.
The first plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
14 The applicant submits that the colour of the trade mark applied for, far from being a basic blue shade, is, on the contrary, very specific and furthermore a colour designated by an internationally recognised pantone number. That colour confers on the sign applied for a high degree of distinctiveness which makes it arbitrary and fanciful. The applicant also points out that OHIM has accepted that a colour ‘per se’ can be registered.
15 The applicant also claims that the trade mark applied for is an arbitrary, specific and unusual shape. There is nothing to suggest that the mark applied for is a reproduction of the product in question since, on the contrary, it is set apart ‘visually and conceptually ... from other goods of the same type’.
16 That particular colour and shape are easily remembered by the relevant public. That public, according to the applicant, is made up of informed professionals and amateurs, since hacksaw blades are not used every day. In combination, the colour and shape of the trade mark applied for make it inherently distinctive.
17 Therefore, it claims, the contested decision failed to apply OHIM’s internal guidelines which provide, regarding Article 7(1)(b) of Regulation No 40/94, that ‘where the graphic representation of the goods or services is unusual or fanciful the trademark is not devoid of distinctive character and the examiner should not object under this Heading. ... Where a trademark consists of a combination of several elements which on their own would be devoid of distinctive character, the trademark taken as a whole may have distinctive character’.
18 In addition, the use of the trade mark applied for as a label affixed to saw blades is not decorative, but an indication of commercial origin in the mind of the average consumer, distinguishing the saw blades at issue from those of competing undertakings.
19 OHIM submits that the first plea is unfounded.
Assessment of the Court
20 The Court considers that this plea is manifestly lacking any foundation in law.
21 Under Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are to be refused registration, the essential function of a trade mark being that of identifying the commercial origin of goods or services, enabling the consumer who acquired them 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 (Case T‑34/00 Eurocool Logistik v OHIM(EUROCOOL) [2002] ECR II‑683, paragraph 37).
22 The distinctive character of a trade mark must be appraised having regard to, first, the goods or services for which registration is sought and, secondly, the way it is perceived by the relevant public (Case T‑323/00 SAT.1 v OHIM (SAT.2) [2002] ECR II‑2839, paragraph 37).
23 In the present case, the Board of Appeal correctly concluded that the trade mark applied for lacked distinctive character.
24 Concerning the shape of the trade mark applied for, the Board of Appeal correctly considered, in paragraph 13 of the contested decision, that the trade mark applied for, presented in the form of a label, ‘copies to a large degree the shape of the goods it applies to, that is to say, a saw blade,’ and that ‘the piece missing, which corresponds to approximately one tenth of the label, is not sufficiently striking to be the determining factor which makes the trade mark [applied for] distinctive’.
25 The trade mark applied for is in the shape of a long thin strip, which is characteristic of non-rotary saw blades. The piece missing is, furthermore, a characteristic of that type of product, allowing the blade to be fixed to the saw. The trade mark applied for therefore seems to be a basic sign, restricted to a clear, schematic and straightforward reproduction of the goods in respect of which the application for protection was made.
26 As regards the colour of the trade mark applied for, the Board of Appeal also rightly stated, in paragraph 14 of the contested decision, that ‘coloured saw blades are commonplace and the use of the colour blue is not unusual’.
27 Saw blades are often coloured because they contain an anticorrosive coating. Therefore, that coloured appearance is not such as to make the sign at issue distinctive.
28 As regards the definition of the relevant public, the Board of Appeal also considered correctly that consumers would not pay attention to the specific features of the trade mark applied for, such as the piece missing from it or its blue colour, when they bought a saw blade and that, consequently, they would not perceive it as an indication of the commercial origin of the product.
29 The trade mark applied for, the overall impression of which must be considered (Case C‑286/04 P Eurocermex v OHIM [2005] ECR I‑5797, paragraph 22), does not have a particularly unusual character. On the contrary, it even allows the relevant public to detect immediately and without further thought that the sign for which registration is sought relates to a saw blade. OHIM did not, therefore, fail to apply its own internal guidelines, relied upon by the applicant (paragraph 17 above).
30 It follows from the foregoing that the first plea must be rejected.
The second plea, alleging infringement of the rules on the burden of proof
Arguments of the parties
31 By its second plea, the applicant submits that it is for the examiner to substantiate and give reasons for objections to registration of the trade mark applied for; it is not for the applicant to prove that the mark is distinctive. Since the absolute grounds of refusal constitute an exception to the general rule under which a sign is eligible for registration where it satisfies the requirements of Article 4 of Regulation No 40/94, they should be given a restrictive and not, as seems to have been the case here, a broad interpretation.
32 OHIM submits that the second plea is unfounded.
Assessment of the Court
33 The Court takes the view that this plea is also manifestly lacking any foundation in law.
34 The onus is on the trade mark applicant, who is relying on the distinctive character of that mark and who has thorough knowledge of the market in question, to provide specific and substantiated information proving that the trade mark applied for has a distinctive character which is intrinsic or acquired through use, since he is best placed to do so (see, to that effect, Case T‑194/01 Unilever v OHIM (Ovoid Tablet) [2003] ECR II‑383, paragraph 48).
35 Moreover, it should be noted that that requirement is consistent with the general rules on the burden of proof, pursuant to which it is for the person who is relying on a right to adduce evidence that he is the proprietor of that right. Since the registration of a Community trade mark presupposes that that mark has distinctive character, the onus is therefore on the person requesting the protection linked to its registration to prove, inter alia, that it has a distinctive character.
36 The second plea must therefore be rejected.
The third plea, concerning the existence of a previous registration practice of OHIM and a judgment of the Court of First Instance
Arguments of the parties
37 In its third plea, the applicant is relying on the registration by OHIM of some Community trade marks on the basis of a minimum degree of distinctiveness possessed by the representative signs in question.
38 The applicant also cites the judgment of the Court of First Instance in Case T‑128/01 DaimlerChrysler v OHIM(Calandre) [2003] ECR II‑701, which annulled the Board of Appeal’s decision, holding that the Community trade mark sought, namely the representation of a grille for goods in Class 12 of the Nice Agreement (‘Vehicles; apparatus for locomotion by land, air or water; parts thereof’), was in that instance, taking account of the fact that it was ‘not exactly commonplace’, not entirely devoid of distinctive character.
39 OHIM submits that the third plea is unfounded.
Assessment of the Court
40 The Court takes the view that this plea is also manifestly lacking any foundation in law.
41 As regards, first of all, the previous registration practice of OHIM, the minimum degree of distinctiveness required for the purposes of registration must be assessed in each case in the light of the particular circumstances. 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 legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards (see Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47, and the case-law cited; Case T‑36/01 Glaverbel v OHIM(Surface of a plate of glass) [2002] ECR II‑3887, paragraph 35; Case T‑302/03 PTV v OHIM(map & guide) [2006] ECR II‑4039, paragraph 55, and Case T-207/06 Europig v OHIM(EUROPIG) [2007] ECR II‑0000, paragraph 40).
42 As regards, secondly, the judgment in DaimlerChrysler (cited in paragraph 38 above), it should be observed directly that that judgment is not applicable to the present case.
43 In holding that the trade mark applied for did not completely lack distinctiveness, the Court observed that the grille device was ‘not exactly commonplace’ (paragraph 49), ‘not altogether commonplace’ (paragraph 46), and was not an image of a contemporary grille (paragraph 47). The Court also stated that the trade mark applied for was an essential means of differentiating between vehicles (paragraph 42), and consisted of an unusual grille design, conveying the impression of an old-fashioned grille (paragraph 46).
44 It is clear that the criteria which led the Court in DaimlerChrysler to accept that the trade mark applied for had a minimum degree of distinctiveness are not satisfied in the present case as regards the reproduction of a saw blade in the colour blue. Such a reproduction is, on the contrary, entirely commonplace, usual and contemporary and not in any way a means of differentiating between saws.
45 The third plea must therefore also be rejected.
46 In the light of all the foregoing, the action must be dismissed, under Article 111 of the Rules of Procedure, as manifestly lacking any foundation in law.
Costs
47 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 will be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby orders:
1. The action is dismissed as manifestly lacking any foundation in law.
2. Kapman AB shall pay the costs.
Luxembourg, 5 December 2007.