JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

11 December 2014 (*)

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

In Case T‑712/13,

Monster Energy Company, established in Corona, California (United States), represented by P. Brownlow, Solicitor,

applicant,

v

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

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 17 October 2013 (Case R 609/2013-1), concerning an application for registration of the word sign REHABILITATE as a Community trade mark,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 20 December 2013,

having regard to the response lodged at the Court Registry on 26 March 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 24 April 2012, the applicant, Monster Energy Company, filed an application for registration of a Community trade mark at 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 trade mark in respect of which registration was sought is the word sign REHABILITATE.

3        The goods in respect of which registration was sought are in Classes 5, 30 and 32 under the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 5: ‘Nutritional supplements’;

–        Class 30: ‘Ready to drink tea, iced tea and tea-based beverages; ready to drink flavoured tea, iced tea and tea-based beverages’;

–        Class 32: ‘Non-alcoholic beverages’.

4        By decision of 1 February 2013, the examiner rejected the Community trade mark application for all the goods at issue on the grounds that the word ‘rehabilitate’ could not be accepted for registration under Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009. In particular, the examiner considered that the word ‘rehabilitate’ immediately informed consumers, without further reflection, that the goods were nutritional supplements and drinks which helped restore consumers to health.

5        On 28 March 2013 the applicant lodged an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6        By decision of 17 October 2013 (‘the contested decision’), the First Board of Appeal dismissed the applicant’s appeal on the ground that, first, the mark applied for, in one of its possible meanings, pointed to the possibility of restoring a person to a good or healthy condition, secondly, the word at issue contains obvious and direct information on the function and intended purpose of the goods at issue and, thirdly, relevant consumers understand immediately and without further reflection that the goods applied for are capable of helping them return to a good or healthy condition.

7        Thus, the Board of Appeal concluded that the link between the sign and the goods at issue was sufficiently close for that sign to fall within the scope of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009, without considering it necessary to examine the second reason given by the examiner, relating to Article 7(1)(b) of that regulation.

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

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 relies on three pleas in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009.

11      In essence, by the first plea in law, the applicant disputes the interpretation of the mark applied for which was given by the Board of Appeal. By the second plea in law, it claims that there is no direct and concrete relationship between the word ‘rehabilitate’ and the goods at issue. By the third plea, the applicant submits that that word is not perceived by the relevant consumers as being related to restoring health.

12      Under Article 4 of Regulation No 207/2009, a Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

13      The essential function of a trade mark is that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service 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 (judgments of 12 June 2007 in MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, EU:T:2007:172, paragraph 28, and of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 25).

14      Article 7(1)(c) of Regulation No 207/2009 provides that 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 are not to be registered.

15      According to settled case-law, 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, unlike Community trade marks, be freely used by all (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31, and judgment in EUROPIG, paragraph 13 above, EU:T:2007:179, paragraph 24).

16      For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services at issue to enable the public concerned immediately to perceive, without further thought, a description of the goods and services at issue or one of their characteristics (judgment in EUROPIG, paragraph 13 above, EU:T:2007:179, paragraph 27).

17      The descriptive character of a mark, within the meaning of Article 7(1)(c) of Regulation No 207/2009 must be assessed in relation, first, to the goods or services for which registration is sought and, second, to the relevant public’s perception of it (see the order of 17 January 2013 in Abbott Laboratories v OHIM, C‑21/12 P, EU:C:2013:23, paragraph 69 and case-law cited; judgment in EUROPIG, paragraph 13 above, EU:T:2007:179, paragraph 30).

 The first plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009 as regards the meaning given by the Board of Appeal to the mark applied for

18      By its first plea in law, the applicant claims, in essence, that the Board of Appeal misinterpreted the mark applied for, by finding that the word ‘rehabilitate’ means the restoration of a state of good health or good physical condition. However, in its view, that word implies a recovery process requiring human intervention, that is, training or therapy, and not by means of food or drink such as the goods at issue.

19      OHIM disputes the applicant’s arguments.

20      In the present case, it is clear, first, that the goods listed in paragraph 3 above are everyday consumer goods which, given their nature and their characteristics, are intended for the average consumer, who is reasonably well informed and reasonably observant and circumspect, and, secondly, that the relevant public is the English-speaking public.

21      In addition, it must be noted that it is true that one of the possible meanings of the word ‘rehabilitate’ is that put forward by the applicant, namely that of a recovery process requiring human intervention, which occurs through training and therapy, and not by means of food or drink.

22      However, it must be noted that, as the Board of Appeal pointed out, the word ‘rehabilitate’ can also mean to bring a person back to a good state of health or to enable him to return to a good physical condition, which is something that ‘nutritional supplements’ in Class 5 and drinks in Classes 30 and 32 are supposed to help to do.

23      It is settled case-law that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment in OHIM v Wrigley, paragraph 15 above, EU:C:2003:579, paragraph 32).

24      Accordingly, the fact that the word ‘rehabilitate’ may have other meanings, as the applicant claims, is not such as to rule out the descriptive character of the mark applied for.

25      Accordingly, it is appropriate to find that the Board of Appeal did not err in interpreting the mark applied for.

26      The first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, as regards the lack of a direct and concrete link between the word and the goods at issue

27      By the second plea in law, the applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for contained obvious and direct information about the function and purpose of the goods at issue. In its view, the word ‘rehabilitate’ is a broad term which, at most, vaguely refers to a positive connotation of the qualities of the relevant goods and could allude to many goods and services, but which, in this case, is not a meaningful and specific reference to the purpose, nature or other characteristics of the goods at issue.

28      OHIM disputes the applicant’s arguments.

29      In the present case, as regards, first, the link between the word ‘rehabilitate’ and the goods at issue, it is clear that when a member of the public purchases one of those goods, he establishes a direct and concrete relationship between those goods and the effect (or one of the possible effects) of using them, namely to quickly restore a person to having a high level of energy. That link is particularly evident in the case of ‘nutritional supplements’ in Class 5, which are designed to help users return to a good physical condition. Such a link also exists in relation to drinks in Classes 30 and 32, which include ‘energy drinks’, in particular when consumed during physical exertion, as the Board of Appeal has held.

30      Therefore, in particular for the part of the relevant public engaged in intense physical exertion, the word ‘rehabilitate’ does not include a general reference to the concept of improving health, but contains obvious and direct information on the purpose of the relevant goods and therefore falls within the scope of the prohibition referred to in Article 7(1)(c) of Regulation No 207/2009.

31      As regards, secondly, the applicant’s reference to two earlier decisions of OHIM recognising the lack of descriptive character of the sign PROACTIV, in relation to ‘pharmaceutical preparations; dietetic substances’ and the sign DEEP RELIEF, in relation to ‘products for pain relief’, suffice it to state that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the Union judicature and not on the basis of a previous decision-making practice (see judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65 and case-law cited).

32      Accordingly, while, having regard to the principles of equal treatment and sound administration, OHIM is obliged to take into account the decisions already taken and to consider with particular 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. 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. Such an examination must therefore 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 (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 77 and the case-law cited).

33      In the present case, it is clear from the contested decision that the Board of Appeal carried out a comprehensive and detailed examination of the mark applied for to dismiss the appeal. As has been stated in paragraphs 29 and 30 above, the Board of Appeal was right to find that the word ‘rehabilitate’ informed the target public of a characteristic of the goods at issue and was a clear indication of their purpose. Those findings allow it to be held that the registration of the word sign at issue as a Community trade mark is precluded, as regards those goods, by the absolute ground for refusal in Article 7(1)(c) of Regulation No 207/2009. It follows that the applicant cannot effectively rely on previous decisions of OHIM for the purpose of invalidating that conclusion.

34      The first plea in law must therefore be rejected.

 The third plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009 on the ground that consumers will not understand immediately, without further reflection, that the goods requested will help restore them to health

35      By the third plea in law, the applicant claims that the Board of Appeal was wrong to find that consumers, faced with the trade mark, understood immediately and without further reflection that the goods at issue would help restore them to health. It argues, in essence, that the sign applied for is not a direct meaningful expression used in trade to designate the goods at issue and it cannot be assumed that a condition, state or way of living is directly linked to the goods requested, as such condition or state may be the result of several factors.

36      OHIM disputes the applicant’s arguments.

37      In the present case, it should be noted, first, that the third plea in law does not put forward arguments which are actually different from those made in the context of the other pleas in law.

38      Next, given the link between the meaning of the mark applied for and the purpose of the goods at issue, which has been assessed in the context of the second plea in law, the Board of Appeal was right to find, in paragraph 18 of the contested decision, that the relevant public, faced with the sign REHABILITATE, understood immediately and without further reflection that the goods at issue could help them to return to a good or healthy condition.

39      Finally, that assessment is not called into question by the applicant’s arguments made in the context of the third plea in law.

40      First, the applicant’s argument that the mark is not an expression which is used in trade in relation to the goods at issue must be rejected. Even if the accuracy of that assertion were established, it should be borne in mind that it is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation No 207/2009 actually be in use at the time of the application for registration in a way that is descriptive of goods such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgments in OHIM v Wrigley, paragraph 15 above, EU:C:2003:579, paragraph 32, and of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 97).

41      As regards, secondly, the applicant’s argument that its reasoning is borne out by the decision of the Cancellation Division, which found that the word sign FITNESS could not be considered to be descriptive of the relevant goods, in that case including milk, protein preparations, cereals, water, fruit drinks and non-alcoholic drinks, as that sign did not allow the user to immediately understand the characteristics or qualities of the goods without further reflection, it must be stated that that argument cannot be accepted.

42      Indeed, it is sufficient to bear in mind the case-law cited in paragraphs 31 and 32 above and to observe, as is apparent from paragraph 38 above, that the Board of Appeal was right to find that consumers, faced with the mark ‘REHABILITATE’ understood immediately and without further reflection that the goods at issue could help them to return to a good or healthy condition, so that the applicant cannot effectively rely on a previous decision of OHIM, moreover concerning different specific circumstances, in order to invalidate that conclusion.

43      The third plea in law must therefore be rejected.

44      Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.

 Costs

45      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.

46      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 (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Monster Energy Company to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 11 December 2014.

[Signatures]