JUDGMENT OF THE GENERAL COURT (First Chamber)

10 February 2015 (*)

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

In Case T‑648/13,

IOIP Holdings LLC, established in Fort Wayne (United States), represented by H. Dhondt and S. Kinart, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 September 2013 (Case R 1028/2013-2), concerning an application for registration of the word sign GLISTEN as a Community trade mark,

THE GENERAL COURT (First Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 3 December 2013,

having regard to the response lodged at the Court Registry on 29 April 2014,

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 dispute

1        On 30 October 2012, the applicant, IOIP Holdings LLC, filed an application for registration of a Community trade mark at 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        The mark in respect of which registration was sought is the word sign GLISTEN.

3        The goods for which registration was sought are in Class 3 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: ‘Cleaning preparations for dishwashers; cleaning preparations for washing machines; cleaning preparations for hot tubs and jetted bathtubs; cleaning preparations for microwave ovens; cleaning, freshening, deodorant and disinfectant preparations for garbage disposals’.

4        Following rejection by the Examiner, by decision of 5 April 2013, of the application for the mark on the ground that it did not comply with Article 7(1)(b) and (c) of Regulation No 207/2009, the applicant, on 3 June 2013, lodged an appeal with OHIM against that decision.

5        By decision of 11 September 2013, the Second Board of Appeal of OHIM dismissed the appeal in its entirety (‘the contested decision’). The Board of Appeal found, in particular, that the English word ‘glisten’ means ‘to shine by reflecting light from a wet, oily or smooth surface’ and that it therefore informs consumers, without further reflection, of the purpose of the goods covered by the mark applied for. By reason of its descriptive character, the mark applied for is, it found, necessarily devoid of distinctive character.

 Forms of order sought

6        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to accept registration of the mark applied for;

–        order OHIM to pay the costs.

7        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility

8        OHIM submits that the applicant’s second head of claim, requesting the Court to order OHIM to accept registration of the mark applied for, is inadmissible in so far as it requests the Court to issue a direction to OHIM.

9        In this regard, it should be recalled that, according to settled case-law, OHIM is required, pursuant to Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgments of the Courts of the European Union. Consequently, the General Court is not entitled to issue directions to OHIM. It is for the latter to draw the conclusions from the operative part of the judgment of the General Court and from the grounds on which it is based (see judgment of 12 April 2011 in Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, ECR, EU:T:2011:158, paragraph 12 and the case-law cited).

10      The applicant’s second head of claim must therefore be rejected as inadmissible.

 Substance

11      In support of its action for annulment, the applicant raises two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009 and, second, infringement of Article 7(1)(b) of that regulation. It is appropriate to begin by examining the first plea.

12      The applicant submits, essentially, that the goods designated by the mark applied for are not intended to make objects shine or glisten. Therefore, it contends, that mark cannot be understood as informing consumers of the purpose of the goods in question.

13      OHIM contests the applicant’s arguments.

14      It should be borne in mind that Article 7(1)(c) of Regulation No 207/2009 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 or indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31 and the case-law cited).

15      A word sign 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. Furthermore, it is not necessary, in order for OHIM to refuse such registration, that the sign in question should actually be in use in a way that is descriptive, but merely that it could be used for such purposes (OHIM v Wrigley, paragraph 14 above, EU:C:2003:579, paragraph 32).

16      Furthermore, it is irrelevant whether the characteristics of the goods or services which may be described by the sign in question are commercially essential or merely ancillary, or even whether or not there are synonyms permitting the same characteristics to be designated (see, by analogy, judgment in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraphs 101 and 102).

17      It is also important to bear in mind that the descriptive character of a sign may be assessed only, first, in relation to the understanding of the mark by the relevant public and, secondly, in relation to the goods or services concerned (see judgment of 8 July 2008 in Lancôme v OHIM — CMS Hasche Sigle (COLOR EDITION), T‑160/07, ECR, EU:T:2008:261, paragraph 44 and the case-law cited).

18      In the present case, as the Board of Appeal correctly found in paragraph 18 of the contested decision, without being challenged by the parties, the goods in question are everyday goods mainly aimed at the average consumer, who, in the light of their nature, is considered to be reasonably well informed and reasonably observant and circumspect. Moreover, since the word ‘glisten’ is an English word, the relevant public comprises English-speaking consumers in the European Union.

19      As regards the descriptive character of the word ‘glisten’, the Board of Appeal, first of all, and correctly, noted that it means ‘to shine by reflecting light from a wet, oily or smooth surface’. The applicant agrees, in essence, with that definition.

20      Next, the Board of Appeal found that, rather than carrying out a grammatical analysis of the word ‘glisten’, consumers will focus on its meaning, which is unequivocal and which immediately informs them, without further reflection, of the purpose of the goods covered, namely to make objects shine. Thus, upon seeing the word ‘glisten’ associated with the various cleaning products covered by the mark applied for, the relevant public will understand that those cleaning products will be used to make the cleaned objects, such as dishwashers and microwave ovens, shine.

21      That analysis, which cannot be called into question by the applicant’s arguments, must be endorsed.

22      First, the applicant claims that the goods covered by the mark applied for are cleaning products, the description of which gives no indication whatsoever that their purpose would be to make objects shine. Their sole purpose, it submits, is to clean and to disinfect.

23      It must be recalled in this regard that, for the purpose of assessing the descriptive character of the mark applied for, the stated or real purpose of the goods at issue is not conclusive, since account must be taken solely of the point of view of the relevant public (see, to that effect, judgment of 3 December 2003 in Audi v OHIM (TDI), T‑16/02, ECR, EU:T:2003:327, paragraph 33). The relevant public will not, however, necessarily distinguish between the concepts of shininess and cleanliness, since a shiny or glistening surface may give an impression of cleanliness and purity. Thus, — as OHIM has correctly submitted — due in particular to the advertising for cleaning products of all kinds to which the average consumer is exposed, the term ‘to shine’ and its synonyms are, in the mind of the relevant public, closely associated, to the point of overlapping, with the concept of cleanliness.

24      It follows that the Board of Appeal acted correctly in law in noting that, in the mind of the relevant public, the particular purpose of the goods covered by the mark applied for is to make objects shine.

25      Secondly, it is necessary to reject the applicant’s argument that, given its uncommon and poetic nature and its specific meaning, the word ‘glisten’ would not be used to describe the purpose of the goods covered by the mark applied for. Indeed, even if it is accepted that that term is liable to have meanings or connotations other than those set out in paragraphs 19 and 20 above, and that it is possible to classify those connotations as ‘poetic’, the fact remains that, when it is specifically associated with the goods covered by the mark applied for, that term directly describes, in the mind of the relevant public, an effect which may be achieved by using those goods.

26      Thirdly, the applicant takes the view that the contested decision cannot be reconciled with decisions of OHIM allowing registration of the word ‘glisten’ for goods which are clearly intended to make objects shine.

27      In this regard, it is appropriate to recall that while, according to the case-law, in the light of the principles of equal treatment and sound administration, OHIM must have regard for the decisions already taken and consider with especial care whether it should decide in the same way or not, the application of those principles must, none the less, be consistent with respect for the principle of legality (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 75, and judgment of 15 July 2011 in Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, EU:T:2011:392, paragraph 45).

28      On the one hand, in the present case, the Board of Appeal explained, in paragraph 28 of the contested decision, that the Examiner had examined the relevance, in terms of their indicative value, of the earlier decisions on registration relied on by the applicant, and that those decisions concerned marks covering goods different to those at issue in the present case.

29      On the other hand, as is apparent from what is set out in paragraphs 18 to 21 and 24 above, the Board of Appeal did not err in finding that the mark applied for was, in the mind of the relevant public, descriptive of some of the purposes of the goods covered.

30      Fourthly, the applicant invokes the registration of the word mark ‘glisten’ as a trade mark by the United States Patent and Trade Mark Office (USPTO) for goods precisely identical to those at issue in the present case.

31      Suffice it to point out, in this regard, that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant EU rules alone, with the result that OHIM and, if appropriate, the European Union Courts are not bound by a decision given in a Member State to the effect that the sign in question is capable of being registered as a national mark. That is so even if such a decision was adopted under national legislation harmonised with First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (judgment of 27 February 2002 in Streamserve v OHIM (STREAMSERVE), T‑106/00, ECR, EU:T:2002:43, paragraph 47).

32      A fortiori, the fact that the mark applied for may have been registered in the United States is not capable of demonstrating that the Board of Appeal erred in the application of Article 7(1)(c) of Regulation No 207/2009.

33      It follows from the foregoing that the plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009 must be rejected.

34      In those circumstances, it is not necessary to examine the applicant’s second plea concerning the distinctive character of the mark applied for within the meaning of Article 7(1)(b) of Regulation No 207/2009. It is clear from the wording of Article 7(1) of Regulation No 207/2009 that, if one of the absolute grounds for refusal listed in that provision applies, that suffices for the sign at issue not to be capable of registration as a Community trade mark (judgment in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29).

35      The action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility of the annexes to the application contested by OHIM.

 Costs

36      Under Article 87(2) 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 IOIP Holdings LLC to pay the costs.

Kanninen

Pelikánová

Buttigieg

Delivered in open court in Luxembourg on 10 February 2015.

[Signatures]