JUDGMENT OF THE GENERAL COURT (Second Chamber)

25 September 2015 (*)

(Community trade mark — Application for the Community word mark DetergentOptimiser — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Equal treatment)

In Case T‑707/14,

Grundig Multimedia AG, established in Stansstad (Switzerland), represented by S. Walter and M. Neuner, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 9 July 2014 (case R 172/2014-1), relating to an application for the word mark DetergentOptimiser as a Community mark,

THE GENERAL COURT (Second Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 2 October 2014,

having regard to the response lodged at the Court Registry on 5 November 2014,

having regard to the decision of 2 December 2014 refusing to allow a reply to be lodged.

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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the proceedings

1        On 2 July 2013 the applicant, Grundig Multimedia AG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the word sign DetergentOptimiser.

3        The goods in respect of which registration was applied for are in Class 7 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: ‘textile washing machines; washing machines (laundry machines/dishwashing machines); electrical machines for cleaning floors and carpets’.

4        By decision of 27 November 2013 the examiner rejected the application in so far as it concerned the goods mentioned in the preceding paragraph. That rejection was based on Article 7(1)(b) and (c) and (2) of Regulation No 207/2009.

5        On 13 January 2014 the applicant brought an appeal against the decision of 27 November 2013.

6        By decision of 9 July 2014 (‘the contested decision’) the First Board of Appeal of OHIM dismissed the appeal, finding that the mark applied for was descriptive of the characteristics of the goods concerned and consequently that the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 prevented it being registered.

7        At paragraph 18 of the contested decision, the Board of Appeal noted that the goods at issue were mainly intended for domestic use but could also be bought by professionals, that they were technical in character and served specific purposes that they were expected to fulfil over a long period and were, therefore, chosen carefully, the relevant public being more attentive and circumspect than when buying goods for everyday use. The Board of Appeal then held that the sign DetergentOptimiser was composed of English words and that its registrability must be assessed from the point of view of the English-speaking public (paragraph 19). After having analysed the meaning of the words ‘detergent’ and ‘optimiser’ (paragraphs 20 to 26), the Board of Appeal held that the mark applied for, composed of those two words, described, without any further reflection on the part of the public, the goods at issue as allowing an optimal use of detergent (paragraph 27).

 Forms of order sought by the parties

8        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs, including those incurred before the Board of Appeal.

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 raises two pleas in law, alleging respectively, infringement of Article 7(1)(c) of Regulation No 207/2009 and infringement of Article 7(1)(b) of that regulation.

11      Regarding the first plea in law, it should be noted that, under Article 7(1)(c) of Regulation No 207/2009, 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, may not be registered.

12      Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for 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 (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31; and 19 April 2007 in OHIM v Celltech, C‑273/05 P, ECR, EU:C:2007:224, paragraph 75).

13      For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (judgment of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraph 25).

14      It is in the light of those principles that the plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009 must be examined.

15      In the present case, the applicant maintains that the meaning of the word ‘optimiser’ is not obvious, that its use for a machine is unusual, that its association with the word ‘detergent’, which refers to an object and not to a person, makes its meaning even less clear and that the association of those two words refers to the production of a detergent and not to its use.

16      In that regard, it should first be stated that the Board of Appeal, at paragraph 19 of the contested decision, correctly identified the English-speaking public, whether the general public or the professional public, as the relevant public.

17      Then, the Board of Appeal, again at paragraph 19 of the contested decision, correctly pointed out that on reading the English word ‘detergent’ the relevant public would assume that the word ‘optimiser’ is also an English word and would not speculate as to its possible meanings in other languages.

18      Moreover, the sign DetergentOptimiser is composed of two words that the capital letter ‘O’ allows the relevant public to distinguish immediately, first, the word ‘detergent’ and, second, the word ‘optimiser’.

19      The meaning of the word ‘detergent’ is clear. That word describes a chemical substance presented in powder or liquid form which is designed to eliminate dirt and which is, therefore, used in the washing process.

20      The word ‘optimiser’, even if it seems to be used less frequently than the word ‘optimizer’, of which it is a variation, is known in English as OHIM contends referring to the Collins English Dictionary, even if it does not feature in all the dictionaries. It refers to a person or to a thing which draws out the best from something.

21      Lastly, the juxtaposition of those two words is not particularly surprising or unusual.

22      Even if the meaning of the word ‘optimiser’ could, if it were looked at in isolation, require an interpretative effort on the part of the relevant public and refer, for example, to a person as well as to a machine, that is not the case where it is associated with the word ‘detergent’ and relates to appliances for cleaning textiles, clothing, dishes, floors or carpets. Therefore, the Board of Appeal was fully entitled to hold that the mark DetergentOptimiser described, for the relevant public, the goods at issue as enabling an optimal use of detergent without the understanding of the message thus expressed requiring any particular interpretation on the part of that public (paragraph 25 of the contested decision).

23      Consequently, the Board of Appeal was fully entitled to hold, at paragraph 27 of the contested decision, that the sign Detergent Optimiser designates for the relevant public the kind and quality of goods at issue within the meaning of Article 7(1)(c) of Regulation No 207/2009.

24      The above conclusion is not called in question by the other arguments put forward by the applicant.

25      First, the applicant maintains that the expression ‘DetergentOptimiser’ is made up of French words and that in that language it is not descriptive.

26      However, it should be recalled that, in accordance with Article 1(2) of Regulation No 207/2009, the Community trade mark has ‘a unitary character’, which implies that it has ‘equal effect throughout the Community’. It follows from the unitary character of the Community trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union. Thus, under Article 7(2) of Regulation No 207/2009, a mark is not to be registered if it lacks distinctive character in a part of the Union (see judgment of 21 April 2015 in Louis Vuitton Malletier v OHIM — Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, ECR, EU:T:2015:215, paragraph 84 and the case-law cited). The part of the European Union referred to in paragraph (2) of the same article may be comprised of a single Member State (judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraph 83).

27      Therefore, even if the applicant’s argument were well-founded, which has not been established, that would nonetheless not entitle the applicant to have the contested decision quashed.

28      Secondly, the applicant submits that the Board of Appeal infringed the principle of equal treatment by refusing to register the mark applied for, although it agreed to register similar or comparable marks, in particular marks including ‘the American spelling “Optimizer” ’.

29      In the light of the principles of equal treatment and 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).

30      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, paragraph 29 above, EU:C:2011:139, paragraphs 75 and 76).

31      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, paragraph 29 above, EU:C:2011:139, paragraph 77).

32      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 claims 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)(c) of Regulation No 207/2009 existed and thus precluded registration of the trade mark applied for. Since the examination of the sign 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 trade 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 not, therefore, rely to advantage on previous decisions of OHIM.

33      It follows from the foregoing that the first plea in law advanced by the applicant must be rejected, the Board of Appeal having correctly held that the sign at issue was descriptive.

34      In relation to the plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009, the applicant maintains that the sign at issue is sufficiently distinctive to be registered in accordance with that provision.

35      However, it is evident from Article 7(1) of Regulation No 207/2009 that the application of one of the absolute grounds for refusal suffices for the sign at issue not to be registrable as a Community trade mark (judgments of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29, and 9 July 2008 in Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, EU:T:2008:265, paragraph 49).

36      Consequently, since for the goods concerned, the sign at issue is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, and that alone justifies the refusal of the contested registration, there is no need to consider the merits of the arguments based on the distinctive character of that sign. (order of 13 February 2008 in Indorata-Serviços e Gestão v OHIM, C‑212/07 P, EU:C:2008:83, paragraphs 27 and 28).

37      In addition, it should be observed that the Board of Appeal held, at paragraph 31 of the contested decision, that it could dismiss the application before it without ruling on the existence of an absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009.

38      Consequently, the present plea in law in which the applicant disputes a ground for refusal that the Board of Appeal did not rely on in support of its decision cannot properly be relied on against that decision.

39      The present plea in law must therefore be rejected as ineffective.

40      It follows from all the foregoing that the action must be dismissed.

 Costs

41      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 (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Grundig Multimedia AG to pay the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 25 September 2015.

[Signatures]