JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
16 September 2009 (*)
(Community trade mark – Application for the Community word mark BUILT TO RESIST – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94 (now Article 7(1)(c) of Regulation (EC) No 207/2009))
In Case T‑80/07,
JanSport Apparel Corp., established in Wilmington, Delaware (United States), represented by C. Bercial Arias, C. Casalonga and K. Dimidjian-Lecompte, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Laitinen, and subsequently by O. Mondéjar Ortuño, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 12 January 2007 (Case R 1090/2006-2) concerning an application for registration of the word mark BUILT TO RESIST as a Community trade mark
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, M. Prek and V. M. Ciucă (Rapporteur), Judges,
Registrar: K. Pocheć, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 15 March 2007,
having regard to the response lodged at the Court Registry on 24 May 2007,
further to the hearing on 23 April 2009,
gives the following
Judgment
Background to the dispute
1 On 18 February 2002, the applicant, JanSport Apparel Corp., lodged an application for a Community trade mark at 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark for which registration was sought is the word sign BUILT TO RESIST.
3 The goods in respect of which registration was sought fall within Classes 16, 18 and 25 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:
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; advertisement boards of paper or cardboard, albums, announcement cards, bags of paper or plastic, for packaging, bags of conical paper, bibs of paper, books, calendars, cardboard labels, catalogues, charts, embroidery designs (patterns), engravings, envelopes, folders, forms, greetings cards, books, magazines, newspapers, pamphlets, newsletters and other printed publications, photographs, pictures, portraits, postcards, stationery, address plates, address stamps, adhesive tapes for stationery or household purposes, announcement cards book markers, writing pads, plastic film for wrapping, paper, cardboard and goods made from these materials; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks, pencil cases, pens, writing paper, envelopes, posters, paper banners, personal organizers, notebooks and paper binders; mouse pads’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; all purpose bags and sporting bags, soft luggage, luggage cases, backpacks, day packs, fanny packs, frame packs, knapsacks, ski packs, book bags, tote bags, duffle bags, bicycle bags, handbags, garment bags, fanny packs, clothing bags, suitcases, Pullman cases, briefcases, wallets, umbrellas and parasols, business card cases and holders, billfolds and money clips, straps, pads and belts and all related goods to the before mentioned as far as included in class 18’;
– Class 25: ‘Clothing, headgear and footwear’.
4 By decision of 7 July 2006, the examiner rejected the application for a Community trade mark in respect of the goods concerned.
5 On 9 August 2006, the applicant lodged an appeal with OHIM against the examiner’s decision pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
6 By decision of 12 January 2007 (‘the contested decision’), the Second Board of Appeal confirmed the examiner’s decision in so far as it rejected the trade mark application for the following goods:
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; advertisement boards of paper or cardboard, albums, bags of paper or plastic, for packaging, bags of conical paper, bibs of paper, books, cardboard labels, embroidery designs (patterns), engravings, envelopes, folders, books, and other printed publications, photographs, pictures, portraits, stationery, address plates, address stamps, adhesive tapes for stationery or household purposes, announcement cards book markers, writing pads, plastic film for wrapping, paper, cardboard and goods made from these materials; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks, pencil cases, pens, envelopes, posters, paper banners, personal organizers, notebooks and paper binders; mouse pads’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; all purpose bags and sporting bags, soft luggage, luggage cases, backpacks, day packs, fanny packs, frame packs, knapsacks, ski packs, book bags, tote bags, duffle bags, bicycle bags, handbags, garment bags, fanny packs, clothing bags, suitcases, Pullman cases, briefcases, wallets, umbrellas and parasols, business card cases and holders, billfolds and money clips, straps, pads and belts and all related goods to the before mentioned as far as included in class 18’;
– Class 25: ‘Clothing, headgear and footwear’.
7 In that regard, the Board of Appeal in essence held that the trade mark applied for consisted exclusively of an indication which might serve in trade to designate the quality of the goods concerned, namely their durability, and that the sign was therefore descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94 (now Article 7(1)(c) of Regulation No 207/2009). The Board of Appeal annulled, however, the examiner’s decision in respect of the other goods covered by the trade mark application, including ‘writing paper, postcards, magazines, newspapers, pamphlets, newsletters, forms, greeting cards, catalogues, charts, calendars and announcement cards’ falling within Class 16 on the ground that the trade mark applied for was fanciful in relation to those goods, since the property of durability was not required or was even nonsensical.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision in so far as it rejects in part the application for a Community trade mark;
– order OHIM to pay the costs.
9 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
10 In support of its application for annulment of the contested decision, the applicant puts forward a single plea in law, alleging infringement of Article 7(1)(c) of Regulation No 40/94, the applicant having withdrawn at the hearing the plea alleging infringement of Article 7(1)(b) of that regulation (now Article 7(1)(b) of Regulation No 207/2009), formal note of which was taken in the minutes of the hearing.
Arguments of the parties
11 For the applicant, the sign at issue, BUILT TO RESIST, does not allow the relevant public to discern immediately and without further reflection one of the characteristics of the goods concerned. It consequently disputes, inter alia, the finding made by the Board of Appeal in paragraph 11 of the contested decision. The trade mark applied for should therefore not be refused registration.
12 The applicant secondly alleges that the analysis of the word ‘build’ in paragraph 12 of the contested decision was incorrect, as the Board of Appeal seemed to imply that the words ‘manufactured’ and ‘built’ are interchangeable. According to the applicant, such an analysis is incorrect, since the word ‘manufacture’ is normally used for consumer goods, while the word ‘build’ is normally used for the construction of buildings and other large structures.
13 In this connection, the applicant relies on the Webster’s Dictionary definition of the English verb ‘to build’, which defines it as ‘to erect a structure; to construct a public work, as a railway, etc.; to fabricate; to establish (a reputation, etc.); to raise (hopes)’. It submits that the definition of the verb ‘to build’ therefore clearly refers to the construction of buildings and large structures, while the verb ‘to manufacture’ is used in connection with goods falling within Classes 16, 18 and 25, which are manufactured rather than built.
14 The use of the word ‘built’, rather than the word ‘manufactured’, in combination with the expression ‘to resist’, in relation to the goods covered, creates an original and fanciful slogan. According to the applicant, as it uses the term ‘built’ out of context in connection with goods for which it is not normally used, the expression ‘built to resist’ is a thought-provoking play on words. That allows the expression to serve as an indication of origin of the goods concerned. The applicant therefore submits that there is no need to keep that slogan available for present or future use as regards the goods covered and the trade mark applied for will not affect the rights of other users.
15 Moreover, the mere fact that the trade mark applied for is suggestive or evocative of the goods covered by the Community trade mark application is not sufficient for registration of that mark to be refused. In this connection, relying on other decisions of OHIM, the applicant first puts forward the fact that the registrability of ‘suggestive marks’ has generally been admitted by OHIM. It subsequently submits that, even if a slogan may also serve marketing or advertising purposes, in addition to its principal function as a trade mark, it should not be refused Community trade mark protection for that reason.
16 Lastly, the applicant points out that, although OHIM is not bound by the decisions of other national offices, the registration of the trade mark applied for in the United States indicates that the slogan at issue is not descriptive.
17 OHIM disputes the applicant’s arguments.
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. In addition, Article 7(2) of Regulation No 40/94 (now Article 7(2) of Regulation No 207/2009) states that, ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
19 By prohibiting the registration of such signs, that article pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 31).
20 Furthermore, the signs covered by Article 7(1)(c) of Regulation No 40/94 are signs regarded as 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 consumer who acquired the product or service 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-219/00 Ellos v OHIM (ELLOS) [2002] ECR II‑753, paragraph 28, and Case T-348/02 Quick v OHIM (Quick) [2003] ECR II‑5071, paragraph 28).
21 The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are thus only those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see the judgment of 9 July 2008 in Case T-323/05 Coffee Store v OHIM (THE COFFEE STORE), not published in the ECR, paragraph 31 and the case-law cited). Accordingly, a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the relevant public (Case T-322/03 Telefon & Buch v OHIM– Herold Business Data (WEISSE SEITEN) [2006] ECR II-835, paragraph 90).
22 It follows that, for a sign to be caught by the prohibition set out in that provision, 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 the goods and services in question or one of their characteristics (see Case T-19/04 Metso Paper Automation v OHIM(PAPERLAB) [2005] ECR II-2383, paragraph 25 and the case-law cited).
23 It must finally be pointed out that the criteria established by the case-law for the purpose of determining whether a word mark composed of several word elements is descriptive or not are identical to those applied in the case of a word mark containing only a single element (Case T‑28/06 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN) [2007] ECR II-4413, paragraph 21).
24 In the present case, the goods referred to in the application for a Community trade mark fall within Classes 16, 18 and 25 and are connected to paper, paper goods and office requisites (Class 16), leather, imitations of leather, travel articles not included in other classes and saddlery (Class 18) and clothing, footwear and headgear (Class 25). They are articles of everyday consumption directed at a wide public and which are distributed through retail outlets (supermarkets, shopping centres or department stores) or specialised shops and specialised mail order sale. The perspective to be taken into account was therefore that of the average, reasonably well-informed and reasonably observant and circumspect consumer (see, to that effect, Case C-342/97 Lloyd Schufabrik Meyer [1999] ECR I-3819, paragraph 26, and Case T-359/99 DKV v OHIM (Eurohealth) [2001] ECR II‑1645, paragraph 27).
25 In this connection, the examiner’s decision of 7 July 2006 identified the general public as the relevant public at which the trade mark applied for was directed. That finding was not called into question by the Board of Appeal, which, in that connection, referred in paragraph 11 of the contested decision to the consumers of the goods covered by the trade mark application. Having regard to the continuity in terms of functions between the examiners and the Boards of Appeal, to which Article 62(1) of Regulation No 40/94 (now Article 64(1) of Regulation No 207/2009) attests, the examiner’s decision, together with its statement of reasons, form part of the context in which the contested decision was adopted, which is known to the applicant and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see, to that effect, the judgment of 21 November 2007 in Case T‑111/06 Wesergold Getränkeindustrie v OHIM – Lidl Stiftung (VITAL FIT), not published in the ECR, paragraph 64, and the case-law cited, and Case T‑304/06 Reber v OHIMChocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 47). Moreover, the applicant is not disputing the definition of the relevant public in the present case.
26 Besides, since the word sign consists of English words, the relevant public is English-speaking. Thus, pursuant to Article 7(2) of Regulation No 40/94, the relevant public in relation to which the absolute ground for refusal should be assessed is the average English-speaking consumer (see, to that effect, ELLOS, paragraph 31, and Case T-334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II-65, paragraph 28).
27 As regards the meaning of the sign at issue BUILT TO RESIST, as the Board of Appeal correctly stated in paragraphs 11 and 12 of the contested decision, that sign conveys in a way that will be immediately understood that the goods which it designates are particularly durable and resistant against wear and tear. Thus, that slogan, an expression consisting of common English words which is grammatically correct in so far as it is made up of a verb in the past tense and an infinitive introduced by the element ‘to’, clearly states that the high quality of the goods covered by the trade mark application, in comparison with the goods of its competitors, is based on the fact that they are hardwearing and reliable. The Board of Appeal correctly considers that slogan to refer to an object which is, first, manufactured (‘built’) and secondly, made to (‘to’) last (‘resist’) or be resistant. As a whole, the expression ‘built to resist’ therefore means that the goods to which it is affixed have been manufactured in a manner which enables them to be particularly strong and hard-wearing, and thus especially reliable and long-lasting in use.
28 As regards the nature of the relationship between the slogan and the goods concerned, it is apparent from the foregoing that the Board of Appeal was right in observing in paragraphs 11 and 12 of the contested decision that, from the point of view of the relevant public, the expression ‘built to resist’ could have only one possible meaning in relation to paper, paper goods and office requisites in Class 16, leather, imitations of leather, travel articles not included in other classes and saddlery in Class 18 and clothing, footwear and headgear in Class 25, namely that they are manufactured to last and are therefore tough and resistant to wear and tear.
29 Having regard to the sign itself, the goods in respect of which registration is sought and the comprehension of that sign by the relevant public, the assessment made by the Board of Appeal in paragraphs 11 and 12 of the contested decision of the descriptive nature of the trade mark sought has therefore been shown to be correct.
30 The arguments put forward by the applicant cannot affect that assessment.
31 First, as regards the applicant’s contention based on the incorrect analysis of the word ‘built’, which it submits is normally used in relation to the construction of large structures, such as buildings, it is appropriate to recall the case-law according to which, in the case of a compound word mark, the relevant meaning, established on the basis of all its constituent elements and not only on one of them, must be taken into account (VOM URSPRUNG HER VOLLKOMMEN, paragraph 32). In its entirety, the trade mark applied for is not composed only of the word ‘to build’ but of the slogan ‘built to resist’, the meaning of which does not relate only to the construction sector (see paragraphs 27 and 28 above).
32 That is particularly so since the definition of the English verb ‘to build’ on which the applicant relies does not only refer to the construction of buildings and large structures. In addition to that first meaning, the definition relied on by the applicant contains three other meanings: ‘to establish (a reputation etc.)’, ‘to raise (hopes)’ and ‘to fabricate’, a meaning reiterated by the Board of Appeal in the contested decision. The word ‘to build’, in so far as it means ‘to fabricate’, a term used for consumer goods, refers to an industrial process resulting in a product, as is apparent from the Board of Appeal’s assessment.
33 It is settled case-law that is not necessary that the signs and indications composing the mark that is referred to in Article 7(1)(c) of Regulation No 40/94 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 those signs and indications could be used for such purposes. A word 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 (see, to that effect, OHIM v Wrigley, paragraph 32; Case C‑265/00 Campina Melkunie [2004] ECR I-1699, paragraph 38; and Case T‑355/00 DaimlerChrysler v OHIM (TELE AID) ECR II-1939, paragraph 30).
34 It follows that the Board of Appeal correctly held in paragraph 12 of the contested decision that the word ‘built’ could be applicable to any object which is manufactured (‘built’) and the applicant’s contention is thus unfounded.
35 Secondly, the applicant’s arguments that the expression ‘built to resist’ creates an original and fanciful slogan through the use of the word ‘built’ rather than the word ‘manufactured’, in combination with the expression ‘to resist’, are irrelevant. Taking into consideration the goods for which registration is sought, the meaning accepted by the Board of Appeal may be seen to be correct (see paragraphs 27, 28 and 31 above). In that connection, first, a sign falls within Article 7(1)(c) of Regulation No 40/94 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect and by analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 97). Secondly, in the case of a compound word mark, the relevant meaning, established on the basis of all its constituent elements and not only on one of them, must be taken into account (VOM URSPRUNG HER VOLLKOMMEN, paragraph 32).
36 Furthermore, and for the sake of completeness, it should be noted that the expression ‘built to resist’ is grammatically correct in so far as it consists of a verb in the part tense and an infinitive introduced by the element ‘to’. The trade mark applied for is not unusual in structure but, on the contrary, common and correct in the light of English lexical rules. Therefore, the sign at issue is neither inventive nor fanciful in character, nor thought-provoking, in contrast to what is claimed by the applicant.
37 Consequently, the applicant is incorrect in claiming that there is no need to keep the mark applied for available on the ground that it will not affect the rights of other users. In this connection, as is apparent from the case-law cited in paragraph 33 above, it is sufficient that the signs and indications could be used in a way which is descriptive, for registration to be refused under Article 7(1)(c) of Regulation No 40/94. The Court has also held that Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of Member States relating to trade marks (OJ 1989 L 40, p. 1), the wording of which is essentially the same as that of Article 7(1)(c) of Regulation No 40/94, does not depend on there being a real, current or serious need to leave a sign free (Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 35; Case T-356/00 Daimler Chrysler v OHIM (CARCARD) [2002] ECR II-1963, paragraph 27). For the purpose of applying Article 7(1)(c) of that regulation, it is necessary only to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the relevant public, there is a sufficiently direct and specific relationship between the sign and the goods or services in respect of which registration is sought (Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-2957, paragraph 30 and the case-law cited).
38 Third, as regards the applicant’s argument relating to the fact that the registrability of suggestive marks has generally been admitted by OHIM, it should be recalled that the trade mark applied for should nevertheless be capable of fulfilling the essential function of a Community trade mark. The signs referred to by Article 7(1)(c) of Regulation No 40/94 are signs regarded as 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 consumer who acquired the product or service 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 the judgment of 22 May 2008 in Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 27 and the case-law cited). Since the Board of Appeal’s assessment of the descriptive character of the trade mark applied for is correct, that argument must be rejected.
39 Fourthly, as regards the applicant’s arguments based on OHIM’s practice in previous decisions, it is necessary to point out that 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 the boards’ practice in previous decisions (see RadioCom, paragraph 56 and the case-law cited).
40 Fifthly, the applicant’s argument relating to the registration of an identical mark in the United States must be rejected. It is settled case-law in this regard that the Community trade mark regime is an autonomous system with its own set of objectives and rules; it applies independently of any national system. Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone (see RadioCom, paragraph 55 and the case-law cited).
41 Lastly, the Court considers there to be a sufficiently direct and specific link between the conceptual content of the trade mark applied for and the characteristics of the goods in respect of which the trade mark application was rejected by the Board of Appeal, that is to say, paper and cardboard goods, articles in leather or clothes, falling within Classes 16, 18 and 25.
42 The slogan clearly relates to the quality, resistance and reliability of the goods concerned. Those criteria are of particular importance for goods in Classes 16, 18 and 25.
43 In the case of paper and cardboard goods in Class 16, their quality, resistance and durability are very important factors in the consumer’s choice.
44 In respect of the goods in Class 18, which essentially include leather, imitation leather, travel articles not included in other classes and saddlery, and in respect of goods in Class 25 (clothing, footwear and headgear), their durability, resistance and reliability are even decisive factors for the purpose of determining the quality of those goods.
45 Therefore, it must be held that the words of the slogan ‘built to resist’, in themselves or together, refer clearly and directly to the characteristics of the goods concerned and that consequently the applicant is incorrect in claiming that the trade mark applied for is fanciful, imaginative, inventive and thought-provoking. In addition, it may reasonably be conceded that the quality, resistance and reliability of the goods concerned are characteristics which are taken into account in the choice of the relevant consumer.
46 Accordingly, there is, from the perspective of the relevant public, a sufficiently direct and specific relationship between the word sign at issue and the goods concerned falling within Classes 16, 18 and 25.
47 It follows that the plea alleging infringement of Article 7(1)(c) of Regulation No 40/94 must be rejected and, consequently, the action must be dismissed.
Costs
48 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders JanSport Apparel Corp. to pay the costs.
Delivered in open court in Luxembourg on 16 September 2009.
[Signatures]