JUDGMENT OF THE GENERAL COURT (Second Chamber)

25 September 2015 (*)

(Community trade mark — Application for Community word mark 2good — Mark consisting of an advertising slogan — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑366/14,

August Storck KG, established in Berlin (Germany), represented by I. Rohr, A.‑C. Richter, P. Goldenbaum and T. Melchert, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Palmero Cabezas, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 27 February 2014 (Case R 996/2013-1), concerning an application for registration of the word sign 2good as a Community trade mark,

THE GENERAL COURT (Second Chamber),

composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Registry of the General Court on 28 May 2014,

having regard to the response lodged at the Court Registry on 6 August 2014,

having regard to the decision of 8 September 2014 not to allow the lodging of a reply,

further to the hearing on 28 April 2015,

gives the following

Judgment

 Background to the dispute

1        On 1 November 2012, the applicant, August Storck KG, filed an application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for protection of the word mark 2good, relying on the international registration of 22 August 2012 designating the European Union, based on German trade mark application No 302012043158 of 7 August 2012.

2        The goods for which registration was sought are in Class 30 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Confectionery, chocolate, chocolate products, pastries, ice cream, preparations for making the aforementioned products included in Class 30’.

3        By letter of 16 November 2012, the examiner informed the applicant that the mark sought was not eligible for registration, on the ground that it did not fulfil the conditions laid down in Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The examiner stated, in particular, that the mark would be perceived as a laudatory promotional message aimed at highlighting the positive aspects of the goods concerned.

4        By letter of 14 March 2013, the applicant replied, in essence, that the mark sought had to be construed as meaning ‘twogood’ and not ‘toogood’, with the result that consumers would not infer from the mark any information about a specific property of the goods in question. Some intellectual effort on the part of consumers would thus be required.

5        By decision of 3 April 2013, the examiner rejected the application for registration of the mark, on the ground that the Community mark sought came within the scope of the ground for refusal set out in Article 7(1)(b) and (2) of Regulation No 207/2009, since the number 2, which referred to the adverb ‘too’ (as in extremely), reinforced the adjective ‘good’, with the result that the expression would be perceived as a laudatory statement.

6        On 29 May 2013, the applicant lodged an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

7        By decision of 27 February 2014 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It found, in essence, that, contrary to the applicant’s assertions, the number 2, when combined with one or more word elements, usually represented the words ‘too’ or ‘to’, depending on the context. Since the word ‘to’ would make no sense in the mark sought and the expression ‘too good’ was a widely and commonly used laudatory expression, there could be no doubt that the number 2, combined with the word ‘good’, would be perceived primarily by the English-speaking public as ‘too’. Moreover, since all of the goods at issue related to taste or the perception of flavours, the relevant consumer would perceive the mark sought as a laudatory expression about those goods.

 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.

 Law

10      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

11      Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Article 7(2) of Regulation No 207/2009 further states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

12      Distinctive character of a mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that it serves to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgments of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, ECR, EU:C:2011:680, paragraph 42 and the case-law cited, and 10 October 2007 in Bang & Olufsen v OHIM (Shape of a loudspeaker), T‑460/05, ECR, EU:T:2007:304, paragraph 27 and the case-law cited).

13      It must be borne in mind that the signs devoid of any distinctive character referred to in Article 7(1)(b) of Regulation No 207/2009 are signs which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus 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 (judgment of 27 February 2002 in REWE-Zentral v OHIM (LITE), T‑79/00, ECR, EU:T:2002:42, paragraph 26). Such is the case for inter alia signs which are commonly used in connection with the marketing of the goods or services concerned (judgments of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T‑122/01, ECR, EU:T:2003:183, paragraph 20, and 30 June 2004 in Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, ECR, EU:T:2004:198, paragraph 24).

14      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see judgment in Freixenet v OHIM, cited in paragraph 12 above, EU:C:2011:680, paragraph 43 and the case-law cited).

15      As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use (judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 41, and 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 35).

16      As regards the assessment of the distinctive character of such marks, the Court of Justice has already held that it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (judgments in OHIM v Erpo Möbelwerk, cited in paragraph 15 above, EU:C:2004:645, paragraphs 32 and 44, and Audi v OHIM, cited in paragraph 15 above, EU:C:2010:29, paragraph 36).

17      The Court of Justice has thus held that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (judgments in OHIM v Erpo Möbelwerk, cited in paragraph 15 above, EU:C:2004:645, paragraphs 31 and 32, and Audi v OHIM, cited in paragraph 15 above, EU:C:2010:29, paragraph 39).

18      It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. However, such a mark must be regarded as having distinctive character if, in addition to its promotional function, it will be perceived readily by the relevant public as an indication of the commercial origin of the products and services for which its registration is sought (order of 12 June 2014 in Delphi Technologies v OHIM, C‑448/13 P, EU:C:2014:1746, paragraph 37; judgments of 11 December 2012 in Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, EU:T:2012:663, paragraph 22, and 6 June 2013 in Interroll v OHIM (Inspired by efficiency), T‑126/12, EU:T:2013:303, paragraph 24).

19      It must be remembered that the way in which the relevant public concerned perceives trade marks is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgments of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26, and 3 December 2003 in Nestlé Waters France v OHIM (Shape of a bottle), T‑305/02, ECR, EU:T:2003:328, paragraph 34).

20      As a first finding, since in the present case the goods covered by the mark sought include confectionery, chocolate, chocolate products, pastries and ice cream, they are intended for all consumers, with the result that the relevant public is deemed to be the average consumer who is reasonably well informed and reasonably observant and circumspect whose level of attention is somewhat reduced (see, to that effect, judgments of 10 November 2004 in Storck v OHIM (Shape of a sweet), T‑396/02, ECR, EU:T:2004:329, paragraph 39, and 10 October 2012 in Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, EU:T:2012:535, paragraph 99).

21      Moreover, under Article 7(2) of Regulation No 207/2009, the relevant public by reference to which the absolute ground for refusal must be assessed is English-speaking, since the sign in question is composed of elements of the English language, a point not challenged by the applicant (see, to that effect, judgments of 27 February 2002 in Ellos v OHIM (ELLOS), T‑219/00, ECR, EU:T:2002:44, paragraph 31; 15 October 2003 in Nordmilch v OHIM (OLDENBURGER), T‑295/01, ECR, EU:T:2003:267, paragraph 35; and Mehr für Ihr Geld, cited in paragraph 13 above, EU:T:2004:198, paragraph 27).

22      Secondly, it is apparent from paragraph 26 of the contested decision that the Board of Appeal, having endorsed the examiner’s analysis in paragraphs 21 to 24 of its decision, found that the number 2, combined with the word ‘good’ would be perceived at first glance as corresponding to the English word ‘too’, as in ‘extremely’, with the result that, when applied to the goods in question, the mark sought will be construed in the sense of ‘too good’, meaning ‘extremely good’.

23      That finding by the Board of Appeal must be upheld.

24      When seeing the combination of the number 2 and the word ‘good’, the relevant public will understand the number as ‘too’ and not ‘two’ or ‘to’, as that public will think of the meaning of the expression ‘too good’ in relation to the goods covered. Thus, the number 2, combined with the word ‘good’, will be easily and immediately understood by the relevant public as meaning ‘too’.

25      Moreover, contrary to the applicant’s assertions, the expression ‘too good’ cannot be considered to be an incomplete expression, as it complies with the rules of English grammar, without any interpretative effort necessary.

26      No effort will be required to substitute the word ‘too’ for the number 2 in the mark sought, as it is pronounced in the same manner; it will be done easily and automatically, as rightly found by the Board of Appeal in paragraph 26 of the contested decision.

27      Moreover, the fact of combining the word ‘too’, symbolised by the number 2, with another word such as ‘good’ is not unusual or even rare in current linguistic usage; on the contrary, it is used with increasing frequency to describe sensations, either of great contentment or of great disappointment, and not just among younger members of the public, as contended, incorrectly, by the applicant.

28      It has, moreover, been held that it may reasonably be presumed, having regard, in particular, to the very widespread use of the language known as ‘SMS language’ in the course of communication on the Internet by means of instant messaging or electronic mail, in Internet forums and blogs or even in online games, that the number 2, if it is associated with an English word, will itself generally be read in English and understood as referring to the English words ‘two’, ‘too’ or ‘to’, depending on which English word follows it or precedes it (see, to that effect, judgment of 16 January 2014 in Aloe Vera of America v OHIM — Detimos (FOREVER), T‑528/11, ECR, EU:T:2014:10, paragraph 69).

29      Considered from that perspective, it is completely paradoxical to acknowledge, as does the applicant, that the sign ‘4ever’ will be automatically understood as ‘forever’ on the ground that it is the only possible interpretation, whilst refusing to acknowledge that same logical consequence for the sign ‘2good’, when ‘togood’ and ‘twogood’ do not make any sense, unlike ‘toogood’.

30      It follows that the mark sought does not have any particular originality or salience; nor does it require a minimum interpretative effort or trigger any particular cognitive process on the part of the relevant public; rather, it is merely an ordinary advertising slogan making the point that the goods covered by the mark sought are excellent (too good).

31      That finding by the Board of Appeal, inter alia in paragraph 30 of the contested decision, can only be endorsed and the applicant’s line of argument advocating registration of the mark sought must be rejected.

32      Thirdly, contrary to the applicant’s claims, the expression ‘too good’ will be understood by the relevant public as merely an advertising slogan.

33      As rightly observed by the Board of Appeal in paragraph 31 of the contested decision, since all of the goods at issue related to taste or the perception of flavours, the expression ‘too good’ will be perceived only as a laudatory expression about the supposed or proven gustatory qualities of those goods.

34      Moreover, and contrary to the applicant’s submissions, even if the mark sought is not regarded as an advertising slogan, it merely describes an essential feature of the goods in question: their gustatory qualities.

35      Fourthly, regarding the applicant’s argument to the effect that, notwithstanding the laudatory nature of the slogan, the relevant public will perceive the mark sought as an indicator of origin, it should be observed that, unlike the facts which gave rise to the judgment in Audi v OHIM, cited in paragraph 15 above (EU:C:2010:29), the relevant public in the present case will not be confronted with a slogan which can have a number of meanings, or constitute a play on words, or be perceived as imaginative, surprising and unexpected, but simply a statement relating to an allegedly highly positive gustatory quality of the goods covered by the mark sought.

36      It follows that the mark at issue will not in any way be perceived as an indication of the commercial origin of the goods in question.

37      Fifthly, the applicant considers that the Board of Appeal infringed the principle of equal treatment by refusing to register the trade mark applied for, although it agreed to register identical trade marks.

38      In the light of the principles of equal treatment and of sound administration, it has indeed been held that OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 74).

39      However, those principles must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 38 above, EU:C:2011:139, paragraphs 75 and 76).

40      Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 38 above, EU:C:2011:139, paragraph 77).

41      In this case, it is apparent from the contested decision that the Board of Appeal performed a full and specific examination of the trade mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other complaints that that examination led the Board of Appeal to find, correctly, that the absolute ground for refusal to register referred to in Article 7(1)(b) of Regulation No 207/2009 existed and thus precluded the registration of the trade mark applied for. Since the examination of the trade mark at issue in the light of that provision could not, in itself, lead to a different conclusion, the applicant’s claims of a failure to take into consideration the registration of identical marks cannot succeed. In order to cast doubt on the conclusion that the registration of the trade mark applied for is incompatible with Regulation No 207/2009, the applicant may thus not successfully rely on a previous decision of OHIM.

42      Lastly, nor is the assessment in the contested decision contradicted by the registration of the word sign ‘2good’ in Germany and the United States. It must be remembered that registrations already made in a Member State of the European Union are a factor which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark. The Board of Appeal is not bound by such registrations. The same holds true for previous registrations in other English-speaking countries which are not Member States of the European Union, in that trade mark registrations in those countries are governed by a different system than that in force in the EU (see, to that effect, judgments in Mehr für Ihr Geld, cited in paragraph 13 above, EU:T:2004:198, paragraph 35, and 8 November 2007 in MPDV Mikrolab v OHIM (manufacturing score card), T‑459/05, EU:T:2007:336, paragraphs 27 to 29).

43      It follows from all of the foregoing considerations that the single plea must be rejected, as must the action in its entirety.

 Costs

44      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party must 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 GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders August Storck KG to pay the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 25 September 2015.

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