JUDGMENT OF THE GENERAL COURT (Third Chamber)

21 May 2015 (*)

(Community trade mark — Application for Community figurative mark Splendid — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) and Article 7(2) of Regulation (EC) No 207/2009 — Equal treatment — Principle of sound administration)

In Case T‑203/14,

Mo Industries LLC, established in Los Angeles, California (United States), represented by P. González-Bueno Catalán de Ocón, lawyer,

applicant,

v

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

defendant,

ACTION brought against the decision of 7 January 2014 of the First Board of Appeal of OHIM (Case R 1542/2013-1) concerning an application for registration of the figurative sign Splendid as a Community trade mark,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges,

Registrar: J. Plingers, Administrator,

having regard to the application lodged at the Court Registry on 31 March 2014,

having regard to the response lodged at the Court Registry on 21 August 2014,

further to the hearing on 3 March 2015,

gives the following

Judgment

 Background to the dispute

1        On 28 February 2013, the applicant, Mo Industries 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 trade mark in respect of which registration was sought is the figurative sign reproduced below:

3        The goods in respect of which registration was sought fall within Classes 18 and 25 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, for each of those classes, to the following description:

–        Class 18: ‘Backpacks; book bags; sports bags; wallets; handbags; purses; tote bags; umbrellas; brief-case type portfolios; toiletry bags sold empty; cosmetic bags sold empty; shaving kit bags, sold empty; attaché cases; briefcases; satchels; duffel bags; luggage; garment bags for travel; billfolds; tie cases; key cases; diaper bags; shoulder belts; covers for electronic devices’;

–        Class 25: ‘Belts’.

4        By decision of 25 June 2013, the Examiner refused the application in respect of the goods in question on the grounds, inter alia, that the trade mark applied for was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009.

5        On 8 August 2013 the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Examiner’s decision.

6        By decision of 7 January 2014 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. First, it took the view that the goods in question were aimed at the general public and that the distinctiveness of the trade mark applied for had to be assessed by reference to the English-speaking public in the European Union. Secondly, it found that the figurative sign containing the word element ‘splendid’ was an indication descriptive of the goods concerned for the purposes of Article 7(1)(c) of Regulation No 207/2009. Thirdly, it stated that, for the goods in question, that sign was devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation. Fourthly, it decided that the applicant had not shown that the trade mark applied for had acquired distinctive character through use. The Board of Appeal concluded from this that the exception provided for in Article 7(3) of Regulation No 207/2009 was not applicable.

 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 action, the applicant raises two pleas in law, alleging (i) infringement of Article 7(1)(b) and (c), and of Article 7(2), of Regulation No 207/2009 and (ii) breach of the principles of equal treatment and sound administration.

 The first plea in law, alleging infringement of Article 7(1)(b) and (c), and of Article 7(2), of Regulation No 207/2009

10      The applicant submits, in essence, that the figurative and complex nature of the mark applied for confers sufficient distinctiveness on that mark. Thus, consumers who come across the sign in question will not immediately think about its meaning but will be struck by its special features.

11      The applicant contends that the typeface used in the mark applied for is special, unique and not decipherable at first glance. Moreover, in its view, the Board of Appeal did not give sufficient weight to the fact that the mark applied for contains a figurative element in place of the dot over the letter ‘i’, which figurative element is a Community trade mark registered on 2 May 2012 under number 10504652 in respect of goods in Class 25 and services in Class 35. Furthermore, it submits, the mark applied for is more complex than trade mark No 10504652, which the mark applied for incorporates, and the Board of Appeal refused to assess its distinctive character overall.

12      OHIM disputes the applicant’s arguments.

13      It should be recalled that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character cannot be registered. Article 7(2) of that regulation provides that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

14      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 the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 20 May 2009 in CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, ECR, EU:T:2009:164, paragraph 33, and of 21 January 2011 in BSH v OHIM (executive edition), T‑310/08, EU:T:2011:16, paragraph 23).

15      The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of that sign (judgments of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 34, and of 9 September 2010 in OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, ECR, EU:C:2010:508, paragraph 32).

16      With regard to 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 by reason of such use (judgments in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 35, and of 11 December 2012 in Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, EU:T:2012:663, paragraph 15).

17      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. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (judgment in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 45).

18      For the purposes of assessing the distinctiveness of such marks, it is inappropriate to apply to those marks criteria that are stricter than those applicable to other signs (judgments in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 36, and in Qualität hat Zukunft, paragraph 16 above, EU:T:2012:663, paragraph 16). However, it is apparent from the case-law that, while the criteria for the assessment of distinctiveness are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (judgments in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 37, and in Qualität hat Zukunft, paragraph 16 above, EU:T:2012:663, paragraph 17).

19      In the present case, in the first place, it must be pointed out that, in the contested decision, the Board of Appeal took the view that the goods at issue were aimed at the general public and that the average consumer of the goods at issue was deemed to be reasonably well informed and reasonably observant and circumspect. The Board of Appeal also emphasised that, since the sign consisted of a term which exists in English, its distinctiveness had to be assessed with respect to the English-speaking public in the European Union. The applicant does not dispute those findings, which, moreover, are correct and must be confirmed.

20      In the second place, the applicant does not dispute the Board of Appeal’s findings that the word element in the mark applied for is composed of an ordinary word in English which means, inter alia, ‘grand’, ‘spectacular’, ‘superb’ or ‘gorgeous’.

21      Accordingly, it must be held that the word element ‘splendid’ refers clearly to goods the appearance of which presents such qualities. That word element is therefore laudatory for the sake of advertising, the purpose being to highlight the positive qualities of the goods for the presentation of which that element is used (see, to that effect, judgment of 30 June 2004 in Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, ECR, EU:T:2004:198, paragraph 29 and the case-law cited).

22      Moreover, by contrast with everyday consumer products in respect of which aesthetic qualities are not essential, the products covered by the mark applied for in the present case are clearly among those the appearance of which could be described as ‘splendid’.

23      Thus, the word element of the mark applied for will be perceived immediately by the relevant public as a promotional formula which indicates to consumers that the goods covered by the mark are aesthetically superior to competing products (see, to that effect, judgment of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T‑122/01, ECR, EU:T:2003:183, paragraph 29). This is particularly true since that term is commonly used in everyday language, as well as in trade, as a generic laudatory term.

24      In paragraph 26 of the contested decision, the Board of Appeal found that, although the mark applied for is presented in a typeface emulating handwriting, it does not present any striking originality which could add to the distinctive character of that mark. It added that, on the contrary, the typeface used, although stylised, cannot divert the consumer’s attention from the clear message conveyed by the term ‘splendid’.

25      That assessment, which — contrary to what is suggested by the applicant — is supported by an adequate statement of reasons, must be approved.

26      It is, admittedly, true that the graphic style of the typeface used has certain specific features. However, cursive script is an ordinary and traditional style which is used by both children and adults, in daily life or in a professional context, and which remains largely unremarkable from the perspective of any consumer and, in the present case, of the relevant public (see, to that effect, judgment of 19 May 2010 in Zeta Europe v OHIM (Superleggera), T‑464/08, EU:T:2010:212, paragraph 33).

27      Thus, the view cannot be taken that the typeface used makes it difficult to read the term ‘splendid’ and, in particular, that consumers would require a certain degree of concentration in order to identify the letters ‘p’, ‘l’ and ‘e’. The applicant’s argument that consumers who come across the mark would not immediately think of its meaning is likewise unfounded.

28      Accordingly, the relevant public will immediately understand the term ‘splendid’, applied to the goods covered by the mark applied for, as a laudatory reference to their aesthetic quality.

29      In the third place, that finding cannot be called into question by the presence, in place of the dot over the letter ‘i’, of a figurative element which is a Community trade mark registered in respect of goods in Class 25 and services in Class 35.

30      It must be recalled that the assessment of the distinctive character of the mark applied for must relate to the overall impression that it produces and not to each of its elements, taken separately (judgment of 2 July 2009 in Euro-Information v OHIM (Representation of a hand holding a card with three triangles), T‑414/07, ECR, EU:T:2009:242, paragraph 36; see also, to that effect, judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 29, and of 8 May 2008 in Eurohypo v OHIM, C‑304/06 P, ECR, EU:C:2008:261, paragraph 41).

31      Thus, and as the Board of Appeal rightly noted in the contested decision, the fact that the mark applied for contains, in place of the dot over the letter ‘i’, a figurative element which is a registered Community trade mark is not conclusive for the purposes of assessing the distinctive character of that mark as a whole.

32      Moreover, if it were to be assumed that, considered in isolation, the figurative element placed over the letter ‘i’ has a distinctive character, that distinctive character could not benefit the mark applied for in so far as that mark is composed of other dominant elements which are decisive in the overall impression that it produces (see, to that effect, judgment in Representation of a hand holding a card with three triangles, paragraph 30 above, EU:T:2009:242, paragraph 48).

33      As the Board of Appeal pointed out in the contested decision, in the overall analysis of the distinctive character of the mark applied for, that figurative element merely replaces the usual dot over the ‘i’ and thus will be attributed that function within that mark. Moreover, because of its size, that figurative element plays a minor role in the mark considered as a whole.

34      This assessment is supported by the fact that the average consumer must place his trust in the imperfect picture of the mark that he has kept in his mind (judgments of 25 September 2002 in Viking-Umwelttechnik v OHIM (Juxtaposition of green and grey), T‑316/00, ECR, EU:T:2002:225, paragraph 28, and of 12 November 2008 in GretagMacbeth v OHIM (Combination of 24 coloured squares), T‑400/07, EU:T:2008:492, paragraph 47).

35      It must also be added that even misspellings are not generally conducive to overcoming refusal of registration stemming from the fact that the content of the sign is immediately comprehensible as eulogistic or laudatory (see, to that effect, judgment of 21 March 2014 in FTI Touristik v OHIM (BigXtra), T‑81/13, EU:T:2014:140, paragraph 40 and the case-law cited).

36      Thus, in the absence of any element liable to evoke recognition on the part of the relevant public, the mark applied for is not capable of indicating to the consumer the commercial origin of the goods in question.

37      In the light of the foregoing, the Board of Appeal was entitled to find that, as regards the goods covered by the mark applied for, that mark was, from the perspective of the relevant public, devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, read in conjunction with Article 7(2) thereof.

38      In the fourth place, the applicant claims that the mark applied for has been used on the market in order to identify goods other than those covered by that mark. The applicant emphasises that, during the administrative procedure, it adduced evidence which shows that the mark applied for is used in the textile and fashion sector. According to the applicant, the extracts from magazines and the other documents which it submitted show that that mark is perfectly distinctive (i) in respect of goods in Class 25 other than those concerned by those documents, in particular in respect of ‘belts’, and (ii) in respect of the goods in Class 18 covered by the mark applied for related to the textile and fashion sector.

39      The applicant’s argument in that respect cannot, however, call into question the conclusion set out in paragraph 37 above.

40      As a preliminary point, it must be noted that, in the context of its line of argument, the applicant refers to documents which it produced before the Board of Appeal with a view to proving that the mark applied for had acquired, in respect of the goods covered by that mark, a distinctive character by use for the purpose of Article 7(3) of Regulation No 207/2009. It must also be recalled that, in the contested decision, the Board of Appeal took the view that the applicant had not proved that the mark applied for had acquired such a distinctive character.

41      As was noted in the minutes of the hearing, the applicant does not invoke, before the Court, an infringement of Article 7(3) of Regulation No 207/2009, under which the absolute grounds for refusal referred to in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a mark if that mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

42      Next, it must be recalled that the mark applied for is devoid of any intrinsic distinctive character in respect of the goods which it covers, as follows from paragraphs 19 to 37 above. The applicant for registration of a mark which is devoid of any intrinsic distinctive character cannot claim, outside the conditions set out in Article 7(3) of Regulation No 207/2009, that such a mark has become distinctive in consequence of its use.

43      Lastly, and in any event, the documents produced by the applicant, which do not relate to the goods designated by the mark applied for, are not sufficient to establish the distinctive character of that mark in connection with the goods that it designates. In particular, those documents do not prove that the mark at issue is well known and that it has been used for a number of years within the European Union. Thus, it cannot be inferred from those documents that the relevant public is used to establishing a link between that mark and other goods produced by the applicant and that, consequently, that public’s identification of the commercial origin of the goods designated by the mark applied for is facilitated.

44      In the fifth and final place, it follows from Article 7(1) of Regulation No 207/2009 that, in order for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal listed in that provision applies (see judgment of 12 September 2007 in ColArt/Americas v OHIM (BASICS), T‑164/06, EU:T:2007:274, paragraph 31 and the case-law cited).

45      It follows that, since the Court has concluded in paragraph 37 above that the Board of Appeal was fully entitled to find that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, and since the applicant has not contended that that mark had acquired distinctive character through the use made of it for the purposes of Article 7(3) of that regulation, there is no need to examine the alleged infringement of Article 7(1)(c) of Regulation No 207/2009.

46      The first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of the principles of equal treatment and of sound administration

47      First, the applicant claims that the mark applied for has not received the same treatment as two Community trade marks of which it is already the proprietor. In that respect, it invokes the Community figurative mark registered under No 9220328 for services in Class 35 and International Registration No 864149 of the word mark SPLENDID which has been accepted by OHIM for goods in Class 25. Secondly, it submits, the Board of Appeal did not consider with special care whether or not it should adopt an identical decision to those previously adopted by OHIM for the two Community trade marks of which the applicant is already the proprietor and which contain the word element ‘splendid’ or the term ‘splendid’. Thirdly, the applicant invokes the existence of five previous Community trade marks of which it is not the proprietor, which contain the word element ‘splendid’, and which, it submits, are for the most part less distinctive than the mark applied for.

48      In this respect, it must be recalled that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. Having regard to those two principles, 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 special care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied 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 for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive 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 of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 77).

49      In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration of signs, the present application for registration was caught by one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009.

50      In those circumstances, in view of the lack of distinctive character of the mark applied for, the applicant cannot validly invoke the registration of earlier trade marks by OHIM.

51      That assessment cannot be called into question by the applicant’s arguments that it is the proprietor of certain earlier marks registered by OHIM and that the Board of Appeal did not provide any specific argument to explain why those two earlier marks did not constitute valid precedents.

52      First, as may be seen from paragraphs 19 to 37 above, the Board of Appeal concluded that the mark applied for fell within the scope of the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 after carrying out a stringent and full examination of the factual circumstances of the present case.

53      Secondly, while it is true that the applicant does not rely on an unlawful act committed in favour of a third party when it invokes Community trade marks of which it is itself the proprietor, that fact cannot lead to the authorisation of the unwarranted registration of a trade mark which, in view of the facts of the present case, is caught by one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009.

54      Thirdly, the Board of Appeal, in the contested decision, analysed whether or not it should adopt an identical decision to those previously adopted by OHIM in respect of the two Community trade marks of which the applicant is already the proprietor.

55      It is true that, contrary to what was stated by the Board of Appeal in the contested decision, the goods covered by the applicant’s earlier marks are not ‘substantially’ different from those covered by the mark applied for. Nevertheless, there are certain differences between the goods covered by the applicant’s earlier marks and those covered by the mark applied for which were pointed out by the Board of Appeal. Furthermore, in the application, the applicant acknowledges that those goods are not identical and claims solely that they are closely related.

56      In addition, it must be pointed out that the trade marks of which the applicant is already the proprietor are not strictly identical to the mark applied for in the present case.

57      The Board of Appeal, which noted certain differences concerning the marks in question and the goods which they cover, thus provided adequate reasons for its decision in the present case.

58      Lastly, and in any event, it follows from the case-law that the considerations set out in paragraph 48 above apply even if the sign in respect of which registration as a Community trade mark is sought is composed in a manner identical to that of a mark in respect of which OHIM has already approved registration as a Community trade mark and which refers to goods or services which are identical or similar to those for which registration of the sign in question is sought (see order of 12 December 2013 in Getty Images v OHIM, C‑70/13 P, EU:C:2013:875, paragraph 45 and the case-law cited).

59      Accordingly, the fact that the goods covered by the earlier marks invoked by the applicant are closely linked to those covered by the mark applied for cannot have the effect of authorising, in the present case, the registration of the latter.

60      Consequently, the second plea in law must be rejected, and the action dismissed in its entirety.

 Costs

61      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 (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Mo Industries LLC to pay the costs.

Papasavvas

Forwood

Bieliūnas

Delivered in open court in Luxembourg on 21 May 2015.

[Signatures]