JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

25 April 2013 (*)

(Community trade mark – International registration designating the European Community – Word mark ECO PRO – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑145/12,

Bayerische Motoren Werke AG, established in Munich (Germany), represented by C. Onken, lawyer,

applicant,

v

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

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 18 January 2012 (Case R 1418/2011-4), concerning the international registration designating the European Community of the word sign ECO PRO,

THE GENERAL COURT (Sixth Chamber),

composed of H. Kanninen (Rapporteur), President, S. Soldevila Fragoso and G. Berardis, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 29 March 2012,

having regard to the response lodged at the Court Registry on 20 June 2012,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 9 November 2010, the applicant, Bayerische Motoren Werke AG, obtained, from the World Intellectual Property Organisation (WIPO), the international registration designating the European Community for the word sign ECO PRO, bearing the reference W1059979.

2        On 30 December 2010, the international registration was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3        The goods for which registration was sought fall within Classes 9 and 12 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, for each of those classes, to the following description:

–        Class 9: ‘Electric and electronic apparatus for controlling, indicating, accumulating and regulating, data processing apparatus and computers’;

–        Class 12: ‘Motor vehicles and parts thereof included in this class.’

4        On 24 May 2011, the OHIM examiner refused the protection of that international registration on the territory of the European Union on the ground that the sign ECO PRO was devoid of distinctive character in relation to the goods concerned.

5        On 7 July 2011 the applicant lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

6        By decision of 18 January 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed that appeal. It first of all observed that the relevant public consisted of English-speaking end consumers, and English-speaking specialist trade circles, in the European Union. It then held, first, that the word element ‘eco’ was the shortened form of the English words ‘ecological’ and ‘ecology’ and, secondly, that the word element ‘pro’ was the common English abbreviation of ‘professional’ and could also be perceived as meaning ‘supporting’ or ‘favouring’. The sign ECO PRO, considered as a whole, would therefore mean, for the relevant public, ‘ecological professional’ or ‘ecological supporting’. Lastly, that sign does not admit any other interpretation than that the goods concerned are environmentally friendly, support ecology and cause minimal damage to the environment, that they can be used by professionals or that their quality reaches a professional level. In conclusion, the sign ECO PRO may describe a variety of goods, environmentally friendly and designed for professional use, the relevant consumer not perceiving it as an indicator of commercial origin. Where the word element ‘eco’ is, in addition, perceived as an abbreviation of ‘economic’, it would also describe the goods at issue, by indicating that, being environmentally friendly, they consume less energy and therefore enable the consumer to save money. The sign ECO PRO is therefore devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

8        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        In support of its application for annulment, the applicant relies on a single plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009, in so far as the Board of Appeal wrongly found that the sign ECO PRO was devoid of any distinctive character. In its view, neither the elements of which that sign consists nor the combination of those elements has any obvious meaning.

10      According to the applicant, the word element ‘eco’ can, inter alia, refer to ‘ecology’ or ‘economics’, as the Board of Appeal itself acknowledges in the contested decision, but also to ‘engineering, construction and operations’, ‘economic cooperation organisation’ or ‘electronic control’. In actual fact, it would not be likely to be understood as a prefix with the meaning of ‘ecological’ or ‘economical’. Prefixes are always placed before the root of a word and never stand alone as in the present case. Consequently, the relevant public will, rather, believe that the word element ‘eco’ is a kind of acronym.

11      The applicant submits that, so far as concerns the word element ‘pro’, the interpretation suggested by the Board of Appeal is absurd. The use of motor vehicles by professionals and the ‘professional quality’ of those vehicles are taken for granted. It is, moreover, common in the automobile industry to describe products as ‘professional’. There is therefore no descriptive link between the goods concerned and that word element, which would also be understood as an acronym or an abbreviation.

12      Lastly, since the meaning of each of the elements comprising the sign ECO PRO is far from clear, it is all the more difficult to determine the information conveyed by the combination of those elements, which have no semantic connection. There are other possible interpretations of that sign than that according to which the goods concerned are intended for ‘ecological professionals’ or are ‘ecological supporting’. The relevant public is incapable of immediately determining the precise meaning of that sign in relation to those goods. It therefore has a distinctive character.

13      OHIM contests the applicant’s arguments.

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

15      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, 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 (Joined Cases T‑405/07 and T‑406/07 CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD) [2009] ECR II‑1441, paragraph 33, and judgment of 21 January 2011 in Case T‑310/08 BSH v OHIM (executive edition), not published in the ECR, paragraph 23).

16      A minimum degree of distinctive character is, however, sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (Case T‑337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II‑2597, paragraph 44, and Case T‑139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II‑3535, paragraph 16).

17      The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which the application for registration has been made and, second, by reference to the relevant public’s perception of the sign (Case C‑398/08 P Audi v OHIM [2010] ECR I‑535, paragraph 34; Case C‑265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I‑8265, paragraph 32, and judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 30).

18      Furthermore, it is apparent from the case-law that the descriptive signs referred to in Article 7(1)(c) of Regulation No 207/2009 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraph 46, and order of 26 April 2012 in Case C‑307/11 P Deichmann v OHIM, not published in the ECR, paragraph 46).

19      There is thus a measure of overlap between the scope of Article 7(1)(b) of Regulation No 207/2009 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(b) nevertheless being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (Agencja Wydawnicza Technopol v OHIM, paragraph 18 above, paragraph 47, and Deichmann v OHIM, paragraph 18 above, paragraph 47).

20      Lastly, where, in the field to which the trade mark relates, the relevant public perceives a sign as providing details of the type of goods which it designates and not as indicating the origin of those goods, the mark does not meet the conditions laid down by Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 10 December 2008 in Case T‑365/06 Bateaux mouches v OHIMCastanet (BATEAUX MOUCHES), not published in the ECR, paragraph 19; see also, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 69).

21      What has to be determined therefore is whether the association established by the Board of Appeal between the semantic content of the sign for which registration was sought, on the one hand, and the goods in question, on the other, is sufficiently concrete and direct to prove that that sign enables the relevant public to identify certain characteristics of those goods immediately (see, to that effect, Case T‑190/05 Sherwin‑Williams v OHIM (TWIST & POUR) [2007] ECR II‑1911, paragraph 48).

22      In the present case, it is apparent, essentially, from points 13 to 21 of the contested decision that the Board of Appeal held that the sign applied for was devoid of the minimum distinctive character required because the relevant public would understand directly that the goods designated by that sign were either environmentally friendly, or intended for a professional environmentally-friendly use, or, lastly, intended for professional use or likely to be of a quality reaching a professional level. Consequently, that sign could not be perceived by the relevant public as an indication of origin.

23      It must be recalled that the Board of Appeal held, in points 11 and 12 of the contested decision, that the goods covered by the trade mark sought were directed both at the end consumer and at specialist trade circles and that the assessment of the distinctive character of that trade mark was to be based on the perception of the English-speaking public of the European Union. Those considerations have not been disputed. It is appropriate to endorse them.

24      In the case of a sign comprising several word elements, such as the sign ECO PRO, distinctiveness may, in part, be examined in relation to each of its terms or elements, considered separately, but must, in any event, depend on an appraisal of the whole which they comprise. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character (Case C‑329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraph 28).

25      It is apparent from the case-law that the word element ‘eco’ is a common abbreviation for the word ‘ecological’ and that it is perceived as such by the English-speaking public (see, to that effect, judgment of 24 April 2012 in Case T‑328/11 Leifheit v OHIM (EcoPerfect), not published in the ECR, paragraph 25).

26      The Board of Appeal therefore did not err when it held, in point 13 of the contested decision, that that word element was the abbreviated form of the English words ‘ecological’ and ‘ecology’.

27      As regards the word element ‘pro’ it is sufficient to observe that, according to case-law, first, it may be laudatory for the sake of advertising, the purpose of this being to highlight the positive qualities of the goods or services for the presentation of which that element is used, and, secondly, it is commonly used in trade for the presentation of all kinds of goods and services (Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 26). The European Union judicature has already held that that word element would be perceived by the English-speaking public as meaning ‘professional’ or ‘favourable, positive or supportive’ (judgment of 15 November 2011 in Case T‑434/10 Hrbek v OHIM – Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT), not published in the ECR, paragraph 64).

28      Therefore, the Board of Appeal also did not err in holding, at point 14 of the contested decision, that that word element would be perceived as meaning ‘professional’ or ‘favourable’.

29      It must be held that the combination of the word element ‘eco’ and the laudatory word element ‘pro’ does not have the result that the sign ECO PRO, considered as a whole, represents more than the sum of its parts. First, the word element ‘pro’ tends only to reinforce the characteristic evoked by the word element ‘eco’ that the applicant intends to attribute to the designated goods (see, to that effect and by analogy, Case T‑334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II‑65, paragraph 43). Secondly, in respect of the lexical structure employed, which consists, in the present case, in placing a laudatory element after a descriptive element, this is common in advertising language and in the commercial context at issue (see, to that effect, Kit Pro and Kit Super Pro, paragraph 27 above, paragraph 30, and ALPINE PRO SPORTSWEAR & EQUIPMENT, paragraph 27 above, paragraph 64).

30      The Board of Appeal was thus able to conclude, without erring, that the combined meaning of those elements should be understood as ‘ecological professional’ or ‘ecological supporting’ (see, to that effect, EcoPerfect, paragraph 25 above, paragraph 44), as it correctly did at point 15 of the contested decision.

31      Concerning the relationship between the semantic content of the sign ECO PRO and the goods concerned, having regard to what was stated in paragraphs 24 to 30 above, the Board of Appeal could also correctly find, as it did essentially at points 15 to 21 of the contested decision, that that sign would be perceived by the relevant public, in the field to which the application for registration relates, as an indication that the designated goods are intended for ‘ecological professionals’ or are ‘ecological supporting’.

32      It follows from all the foregoing, without it being necessary to examine whether the Board of Appeal erred in finding that the relevant public would directly understand that the goods designated by the sign ECO PRO are intended for professional use or likely to reach a professional level of quality, that that public will perceive the semantic content of that sign as providing information on certain characteristics of the goods concerned and not as indicating their origin. Accordingly, the sign ECO PRO is necessarily devoid of any distinctive character with regard to those goods, within the meaning of Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, concerning Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), Joined Cases C‑90/11 and C‑91/11 Strigl and Securvita [2012] ECR I‑0000, paragraph 39).

33      The judgment in Audi v OHIM, paragraph 17 above, relied upon by the applicant, does not invalidate this finding. It follows from that judgment that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers (Audi v OHIM, paragraph 17 above, paragraph 45). However, it is apparent from the foregoing that neither the sign ECO PRO nor the elements of which it consists will be perceived by the relevant public as an indication of the commercial origin of the goods at issue. Thus, that sign is not appropriate for the purposes of guaranteeing to consumers the origin of those goods (see, to that effect, judgment of 7 September 2011 in Case T‑524/09 Meredith v OHIM (BETTER HOMES AND GARDENS), not published in the ECR, paragraph 28).

34      Lastly, the fact that the sign ECO PRO may have meanings other than that of ‘ecological professional’ or ‘ecological supporting’, as the applicant claims (see paragraph 10 above) and as the Board of Appeal partly concedes at point 20 of the contested decision, does not preclude the application of the absolute ground for refusal provided for in Article 7(1)(b) of Regulation No 207/2009. A word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 29 April 2010 in Case T‑586/08 Kerma v OHIM (BIOPIETRA), not published in the ECR, paragraph 35; see also, by analogy, concerning Article 7(1)(c) of Regulation No 207/2009, Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 32).

35      It follows from all the foregoing that the single plea put forward by the applicant is unfounded. The action must therefore be dismissed.

 Costs

36      Under Article 87(2) of the Rules of Procedure of the Court, 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 GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Bayerische Motoren Werke AG to pay the costs.

Kanninen

Soldevila Fragoso

Berardis

Delivered in open court in Luxembourg on 25 April 2013.

[Signatures]