JUDGMENT OF THE GENERAL COURT (First Chamber)

8 September 2015 (*)

(Community trade mark — Application for the Community word mark MIGHTY BRIGHT — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑714/13,

Gold Crest LLC, established in Goleta (United States), represented by P. Rath and W. Festl-Wietek, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 8 October 2013 (Case R 2038/2012-2) concerning an application for registration of the word sign MIGHTY BRIGHT as a Community trade mark,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 23 December 2013,

having regard to the response lodged at the Court Registry on 11 April 2014,

having regard to the written questions put to the applicant by the Court,

having regard to the observations lodged by the applicant at the Court Registry on 11 February 2015,

further to the hearing on 3 March 2015,

gives the following

Judgment

 Background to the dispute

1        On 3 May 2012, the applicant, Goldcrest LLC, filed an application for registration of a Community trade mark with 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).

2        Registration as a mark was sought for the word sign MIGHTY BRIGHT.

3        The goods in respect of which registration was sought are in Class 11 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: ‘Portable clip-on reading lights and light bulbs’.

4        As the trade mark application was rejected by decision of the examiner of 4 September 2012 on the ground that it did not comply with Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, the applicant filed a notice of appeal against that decision with OHIM on 2 November 2012.

5        By decision of 8 October 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal in its entirety. It found, in particular, that the English words ‘mighty’ and ‘bright’ meant ‘having or indicating might; powerful or strong’ and ‘emitting or reflecting much light; shining’ respectively and that they therefore informed consumers, without further reflection being required, that the reading lights and bulbs concerned were capable of emitting powerful, strong light, thus eclipsing any impression that the sign applied for could indicate a commercial origin. As regards the question whether the sign had acquired distinctive character through use, the Board of Appeal found that the applicant had not provided any evidence to show that the mark had been used intensively in the countries in which English is generally understood.

 Forms of order sought

6        The applicant, following a partial withdrawal at the hearing, claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

7        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

8        In support of its action, the applicant puts forward three pleas in law, alleging (i) infringement of Article 7(1)(b) of Regulation No 207/2009, (ii) infringement of Article 7(1)(c) of that regulation and (iii) an abuse of discretion and infringement of the principle of equality.

 The first plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

9        The applicant submits, in essence, that the Board of Appeal erred in refusing to acknowledge that the mark applied for had distinctive character.

10      According to settled case-law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgment of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, ECR, EU:C:2004:258, paragraph 34; judgment of 8 May 2008 in Eurohypo v OHIM, C‑304/06 P, ECR, EU:C:2008:261, paragraph 66, and judgment of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 33).

11      It is also settled case-law that that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public (judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraph 25; judgment in Henkel v OHIM, cited in paragraph 10 above, EU:C:2004:258, paragraph 35, and judgment in Eurohypo v OHIM, cited in paragraph 10 above, EU:C:2008:261, paragraph 67).

 The relevant public

12      In the present case, as the Board of Appeal rightly found, the goods covered by the mark applied for are everyday consumer goods which are mainly aimed at the average consumer, who is reasonably well informed and reasonably observant and circumspect. The finding that, since the expression ‘mighty bright’ is composed of English words, the relevant public consists of English-speaking consumers in the European Union must likewise be endorsed. The parties have not disputed those findings of the Board of Appeal.

 The distinctive character of the mark applied for

13      The Board of Appeal found in essence, that the expression ‘mighty bright’, taken as a whole, immediately informed the relevant public, without further reflection being required, that the goods covered by the mark applied for were powerful, bright lights and light bulbs, thus eclipsing any impression that the mark could indicate a commercial origin.

14      The applicant submits that the combination of the adjective ‘mighty’ with the adjective ‘bright’ is unusual, because, in order to be correct from a grammatical point of view, the expression would have to be ‘mightily bright’. It takes the view that the uncommon association of the descriptive word ‘bright’ with the non-descriptive word ‘mighty’ is sufficiently distinctive.

15      OHIM disputes the applicant’s arguments.

16      First, it must be pointed out, in that regard, that, as the Board of Appeal rightly found, the words ‘mighty’ and ‘bright’ mean ‘having or indicating might; powerful or strong’ and ‘emitting or reflecting much light; shining’ respectively. The parties have not, moreover, disputed those meanings.

17      Secondly, contrary to the applicant’s claims, it is not only the word bright which is descriptive of the goods designated, but also the word ‘mighty’. Even if the word ‘bright’ were disregarded, the association of the word ‘mighty’ with the goods covered by the mark applied for would indicate clearly to the relevant public that the lights and light bulbs in question are powerful or strong in the sense that they emit a very bright or very strong light.

18      Thirdly, the combination of the two words ‘mighty’ and ‘bright’ is not more capable, in view of the goods designated, of creating distinctiveness than each of its components taken on its own. Given that, in relation to lights and light bulbs, the semantic contents of those words (see paragraph 16 above) are broadly synonymous, their juxtaposition appears to be a duplication, which results in the mutual reinforcement of the two words. Contrary to what the applicant maintains, the relevant public will not therefore need to take ‘several mental steps’ in order to grasp the meaning of the mark applied for. Consequently, the combination of the two words is, from the point of view of the relevant public, also descriptive of the characteristics of the goods covered, in the sense referred to in paragraph 17 above.

19      Fourthly, the allegedly unusual nature of the combination of the words ‘mighty’ and ‘bright’ does not preclude the mark applied for from being descriptive. Although it is true, as the applicant submits, that the adjective ‘mighty’ cannot, in principle, according the rules of grammar, be used to qualify the adjective ‘bright’, the fact remains that the designation ‘mighty bright’ does not deviate enough from everyday language for the descriptive message identified in paragraphs 17 and 18 above to be attenuated.

20      Fifthly, the applicant claims that the documents which it submitted before OHIM show that the public perceives the expression ‘mighty bright’ as a trade mark and not as a descriptive indication. In that regard it must be pointed out, first of all, that some of those documents, namely Annexes F 6 to F 13 to the application, consist of printouts from websites which market the applicant’s goods and of dealers’ catalogues. Those documents therefore only prove that the mark applied for is actually used on the market, but do not show how the relevant public in general perceives it.

21      Next, the fact that the printouts of the results of Internet searches for the expression ‘mighty bright’ mainly show results relating to the applicant’s goods may simply be due to the fact that, as was pointed out in paragraph 19 above, the joint use of those two adjectives is in principle contrary to the rules of grammar. However, that is not inconsistent with the finding that that joint use is sufficiently close to everyday language for the descriptive message which the juxtaposition of the two words conveys in relation to the goods covered by the mark applied for to remain to a large extent dominant in relation to the impression that it might be an indication of commercial origin.

22      Sixthly, the applicant refers to the use of the mark applied for as an indication of commercial origin in the online reviews of purchasers of the goods covered by that mark. In that regard, it must be stated that, contrary to OHIM’s claims, those documents do not show that the mark applied for is used solely as an adjective which qualifies the applicant’s XtraFlex2 model. Annexes F 1 and F 2 to the application relate to two reviews, which were published on the Internet by consumers who had purchased goods covered by the mark applied for, in which the mark applied for is used on its own to identify the applicant’s goods in a general manner, namely as ‘a real Mighty Bright’ and ‘a real, nice working Mighty Bright as advertised’. However, the use of the mark applied for as an identifier of commercial origin by two consumers who are familiar with the applicant’s goods cannot be conclusive in assessing the perception of the mark applied for by the relevant public in general.

23      Lastly, it must be pointed out that the applicant has not, before the General Court, disputed the Board of Appeal’s finding that it had not established that the mark applied for had, in respect of the goods at issue, become distinctive in consequence of the use which has been made of it, within the meaning of Article 7(3) of Regulation No 207/2009.

24      In those circumstances, the applicant’s arguments do not make it possible to call into question the findings of the Board of Appeal referred to in paragraph 13 above.

25      Consequently, the Board of Appeal was right to find that the sign at issue was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. The applicant’s first plea must therefore be rejected.

 The second plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

26      The applicant submits that, by finding that the mark applied for is descriptive, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009.

27      OHIM takes the view that the second plea is ineffective.

28      As is apparent from the contested decision, the Board of Appeal based the dismissal of the applicant’s appeal on the lack of inherent distinctiveness of the mark applied for, for the purposes of Article 7(1)(b) of Regulation No 207/2009, and on the lack of distinctive character acquired through use, for the purposes of Article 7(3) of that regulation. By contrast, it did not base its decision on the ground for refusal set out in Article 7(1)(c) of that regulation.

29      In those circumstances, and even though its finding of lack of distinctive character is, in essence, justified by the descriptiveness of the mark applied for, in relation to the goods covered by that mark, it cannot be maintained that the Board of Appeal infringed a provision which it did not in actual fact apply.

30      Consequently, the applicant’s second plea must be rejected as unfounded.

 The third plea, alleging an abuse of discretion and infringement of the principle of equality

31      The applicant submits that the fact that the trade mark application was rejected whereas comparable marks were registered, both before and after its application, constitutes infringement of the principle of equality. In particular, it maintains that the Board of Appeal did not state why the trade mark registrations invoked by the applicant were not comparable with the present case.

32      OHIM disputes the applicant’s arguments.

33      In that regard, it must be borne in mind that, although, in the light of the principles of equal treatment and of sound administration, OHIM must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality, which precludes a person who files an application for registration of a sign as a trade mark from relying, to his advantage and in order to secure an identical decision, on a possibly unlawful act that was to the advantage of someone else (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 76).

34      In the present case, as has been held in the context of the examination of the first plea, the Board of Appeal was right to find that the mark applied for was devoid of any distinctive character in relation to the goods covered by that mark.

35      Furthermore, as the Board of Appeal correctly pointed out, none of the registration decisions cited by the applicant was rendered by the Boards of Appeal. It cannot therefore, in any event, be maintained that the Board of Appeal departed from its own previous practice.

36      In that context, it is also necessary to reject the applicant’s argument that the fact that those trade mark applications were not brought before the Boards of Appeal shows that the marks in question have distinctive character since no objection was made or upheld. If the examiner agrees to publish a trade mark application and thus implicitly accepts that there are no absolute grounds for refusal, the trade mark applicant will not have any reason to file a notice of appeal before the Boards of Appeal, which will not therefore have any opportunity to rule on the application in question. Similarly, the absolute grounds for refusal will no longer be examined in any subsequent opposition proceedings (judgment of 22 June 2010 in Montero Padilla v OHIM — Padilla Requena (JOSE PADILLA), T‑255/08, ECR, EU:T:2010:249, paragraphs 35 and 36).

37      Furthermore, the circumstances of some of the precedents relied on by the applicant are clearly not comparable to those of the present case, inasmuch as the goods at issue are different. That is true of the Community trade marks MIGHTY SOFTWARE, MIGHTY, HIGH & MIGHTY and MIGHTY MEALS, which are registered under the numbers 9748252, 1020303, 29694 and 10465417 respectively for goods which are not similar to lights or light bulbs in Class 11, and which cannot therefore serve as precedents in assessing the distinctive character of the mark applied for in relation to the goods covered by that mark. That fact had, moreover, already been pointed out in the examiner’s decision of 4 September 2012, which the contested decision simply confirmed, with the result that the applicant cannot maintain that OHIM did not seriously examine the matter.

38      Likewise, the Community trade mark MIGHTY AIR BEAM, which was registered under the number 1042153 in respect of ‘air-conditioning apparatus’ in Class 11, covers goods that are different from those concerned in the present case.

39      It is true that the earlier Community trade mark MIGHTYBULB, which is registered under the number 8777963 in respect of ‘light bulbs’ in Class 11, and the Community trade mark MIGHTY, which is registered under the number 11770872, inter alia, in respect of ‘apparatus for lighting’ in Class 11, are indeed, as OHIM admits, similar to the mark applied for both as regards the signs and the goods covered. However, in the light of the case-law set out in paragraph 33 above, the fact that OHIM allowed them to be registered cannot result in the annulment of the contested decision, the merits of which have just been established.

40      Consequently, the applicant’s third plea must be rejected.

41      Since the three pleas in law put forward by the applicant have to be rejected, the action must be dismissed in its entirety.

 Costs

42      Under Article 134(1) of the Rules of Procedure of the General 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 (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Gold Crest LLC to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Kanninen

Pelikánová

Buttigieg

Delivered in open court in Luxembourg on 8 September 2015.

[Signatures]