JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

23 January 2014 (*)

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

In Case T‑68/13,

Novartis AG, established in Basle (Switzerland), represented by M. Douglas, lawyer,

applicant,

v

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

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 29 November 2012 (Case R 953/2012‑1), concerning an application for registration of the word sign CARE TO CARE as a Community trade mark,

THE GENERAL COURT (Fourth Chamber),

composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 5 February 2013,

having regard to the response lodged at the Court Registry on 17 April 2013,

having regard to the change in the composition of the Chambers of the General Court,

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, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 10 August 2011, the applicant, Novartis 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) 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 trade mark was sought for the word sign CARE TO CARE.

3        The services in respect of which registration was sought are in Classes 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 41: ‘Educational services, including caregivers and patient’s relatives support program relating to alzheimer’s disease’;

–        Class 42: ‘Medical services, including providing medical information to caregivers and patient’s relatives relating to alzheimer’s disease’.

4        By decision of 30 April 2012, the examiner rejected the Community trade mark application in respect of the services referred to in paragraph 3 above on the ground that the mark applied for promoted the properties of the services provided and did not function as an indication of origin. He therefore considered that it could not be registered pursuant to Article 7(1)(b) and (2) of Regulation No 207/2009.

5        On 16 May 2012 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 29 November 2012 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It found, in essence, that the mark applied for was not distinctive within the meaning of Article 7(1)(b) of Regulation No 207/2009 inasmuch as the sign CARE TO CARE could not be appropriate for the purpose of identifying the origin of the services which it designates and could not therefore perform the essential function of a trade mark. In particular, it stated that the sign applied for was a banal expression which referred plainly to the progressive change from one type of care to another and indicated to the relevant public the inherent nature of the educational and medical services covered by that sign. The Board of Appeal added that the message conveyed by the sign applied for was immediately intelligible to any consumer without further thought.

 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 puts forward, in essence, a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. It puts forward four heads of claim: (i) infringement, by the Board of Appeal, of the rules governing the burden of proof (ii) infringement of the principle that only applications for marks which are immediately intelligible to any consumer without further thought may be rejected (iii) infringement of the principles set out by the Court of Justice in Case C‑398/08 P Audi v OHIM [2010] ECR I‑535 and (iv) infringement of OHIM’s previous practice.

10      OHIM disputes the applicant’s arguments.

11      Under Article 7(1)(b) of Regulation No 207/2009 trade marks which are devoid of any distinctive character must not be registered. Article 7(2) of that regulation provides that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non‑registrability obtain in only part of the Community’.

12      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 (Joined Cases T‑405/07 and T‑406/07 CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD) [2009] ECR II‑1441, paragraph 33, and judgment of 21 January 2011 in Case T‑310/08 BSH v OHIM (executive edition), not published in the ECR, paragraph 23).

13      A minimum degree of distinctive character is, however, sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (Case T-337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II-2597, paragraph 44, and Case T‑139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II‑3535, paragraph 16).

14      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 the sign (Audi v OHIM, paragraph 34; Case C‑265/09 P OHIM v Borco‑Marken‑Import Matthiesen [2010] ECR I‑8265, paragraph 32; judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 30).

15      The registration of 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 is not excluded by virtue of such use (Case C‑517/99 Merz & Krell [2001] ECR I‑6959, paragraph 40; Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 41; Audi v OHIM, paragraph 35; judgment of 11 December 2012 in Case T‑22/12 Fomanu v OHIM (Qualität hat Zukunft), not published in the ECR, paragraph 15). As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to those marks criteria which are stricter than those applicable to other types of sign (OHIM v Erpo Möbelwerk, paragraphs 32 and 44; Audi v OHIM, paragraph 36; and Qualität hat Zukunft, paragraph 16). However, it is apparent from the case‑law that, while the criteria for the assessment of distinctive character 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 (OHIM v Erpo Möbelwerk, paragraph 24; Audi v OHIM, paragraph 37; and Qualität hat Zukunft, paragraph 17).

16      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 may be recognised as having distinctive character and the ability to indicate to the consumer the commercial origin of the goods or services in question where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see, to that effect, Audi v OHIM, paragraphs 56 and 57).

17      According to settled case-law, a mark which consists of an advertising slogan must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services in question (see, to that effect, Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 20; Case T‑216/02 Fieldturf v OHIM (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS) [2004] ECR II‑1023, paragraph 25; Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 25; Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 66; and Qualität hat Zukunft, paragraph 22).

18      By contrast, a mark consisting of an advertising slogan must be regarded as devoid of distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula (Qualität hat Zukunft, paragraph 22). For a finding that there is no distinctive character, it is sufficient that the semantic content of the word sign in question indicates to the consumer a characteristic of the goods or services which, whilst not specific, comes from information designed to promote or advertise which the relevant public will perceive first and foremost as such rather than as an indication of the commercial origin of the goods or services (see, to that effect, Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235, paragraph 30 and the case-law cited, and judgment of 12 March 2008 in Case T-128/07 Suez v OHIM (Delivering the essentials of life), not published in the ECR, paragraph 20 and the case-law cited). In addition, the mere fact that the semantic content of the word sign applied for does not convey any information about the nature of the goods or services concerned is not sufficient to make that sign distinctive (see, to that effect, Mehr für Ihr Geld, paragraph 31).

19      The present action must be examined in the light of the abovementioned principles.

20      By its first head of claim, the applicant alleges that the Board of Appeal failed to comply with its obligations in respect of the burden of proof, inter alia that it did not assess the distinctive character of the mark applied for on the basis of facts, but on the basis of mere assumptions. In particular, the Board of Appeal did not provide any sources of information or evidence relating to the services at issue or any explanations for its conclusion. The Board of Appeal did not provide any reasons for, inter alia, the statement that caregiving by relatives is the treatment prescribed in order to lessen the burden of institutionalised care on public resources or the statement that patients suffering from Alzheimer’s disease move from hospital care to home care. Specifically, the applicant enquires who prescribes such a treatment and which public resources are concerned.

21      As regards the applicant’s claim alleging that the Board of Appeal infringed the rules relating to apportionment of the burden of proof, it must be pointed out that, in paragraph 21 of the contested decision, the Board of Appeal took the view that Alzheimer’s disease was a common form of dementia which gradually rendered people incapable of tending to their own needs and could last for many years until the patient’s death. Consequently, caregiving by relatives is the treatment prescribed in order to lessen the burden which institutionalised care for those suffering from that disease represents for public resources. It was in that context that, in paragraph 23 of the contested decision, the Board of Appeal assessed the distinctive character of the mark applied for by reference to the services in Classes 41 and 42 covered by that mark with regard to the relevant public. It concluded that the mark applied for constituted a banal expression referring to the subject matter of the services in question, to the progressive change from one type of care to another or to the education of the public on that change.

22      In that regard, it must be borne in mind, as is apparent from the case-law, that, according to Article 76(1) of Regulation No 207/2009, examiners and the Boards of Appeal of OHIM are required to examine the facts of their own motion. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark. Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they rely on facts which are well known. Facts shown by practical experience generally acquired and likely to be known to anyone, including the relevant public, are well known (see, to that effect, Case C‑25/05 P Storck v OHIM [2006] ECR I 5719, paragraphs 50, 51 and 54).

23      It must be pointed out, first, that, in the present case, the relevant public as defined by the Board of Appeal, consists of professionals with a high level of attention and of the families of patients suffering from Alzheimer’s disease who are particularly well informed as to the seriousness and the effects of that disease.

24      Secondly, it must be stated, as OHIM has observed, that the Board of Appeal relied on well-known facts. It is generally well known that Alzheimer’s disease is incurable and characterised by a progressive deterioration in the state of health of people who suffer from it. The symptoms of that disease usually develop slowly and gradually worsen over time, progressing from mild forgetfulness to widespread brain impairment. The treatment of such a disease requires a gradual adaptation of care, which may include, at certain times, the transfer of the person with the disease from hospital to his home and vice versa where there is a deterioration in the patient’s condition. The information to which the Board of Appeal referred in paragraph 21 of the contested decision is a fortiori well-known to the relevant public, which is especially familiar with the effects of Alzheimer’s disease, as has been pointed out in paragraph 23 above.

25      It follows that in the present case, in relying on well-known facts, the Board of Appeal did not infringe the rules relating to apportionment of the burden of proof.

26      Furthermore, in so far as it is to be understood as alleging that the Board of Appeal infringed the obligation to state reasons to which it is subject under Article 75 of Regulation No 207/2009, the applicant’s argument alleging that the Board of Appeal did not provide any adequate explanation to back up its conclusion must be rejected.

27      In that regard, it must also be recalled that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (see judgment of 15 November 2011 in Case T‑363/10 Abbott Laboratories v OHIM (RESTORE), not published in the ECR, paragraph 73 and the case-law cited).

28      When OHIM refuses registration of a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify the application of the provision relied on. Such a statement of reasons is, in principle, sufficient (see, to that effect, Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 46).

29      It must be pointed out that the Board of Appeal, in paragraphs 21 to 23 of the contested decision, showed its reasoning inasmuch as the meaning upheld in respect of the mark applied for derives from the actual nature of Alzheimer’s disease and of the treatment received by those suffering from that disease, namely the fact that, on account of its incurable nature as well as the fact that it may last for many years until the patient’s death, persons suffering from Alzheimer’s disease are sometimes transferred to their families who take care of them. They are hospitalised where necessary.

30      The first head of claim must therefore be rejected.

31      By the second head of claim, the applicant alleges, in essence, that the Board of Appeal erred in finding that the mark applied for had no distinctive character.

32      First, the applicant submits that the Board of Appeal’s interpretation that the mark applied for will be understood as referring to the progressive change from one type of care to another is, in the present case, the least likely. In its view, it is therefore rather unlikely that a patient suffering from Alzheimer’s disease will be released from a medical establishment to home care. It suggests other interpretations of the mark applied for.

33      Furthermore, it is necessary to deal, in the case of the present head of claim, with the applicant’s claims, put forward in the context of the first head of claim, that the relevant public will not understand immediately the meaning of the mark applied for.

34      Secondly, the applicant submits that the slogan of which the mark applied for consists does not inform the consumer directly about the characteristics of the services covered by that mark. It adds that the mark applied for constitutes an incomplete expression and that considerable reflection on the part of the relevant public is needed in order to understand its meaning.

35      It must be pointed out that the mark applied for consists exclusively of the word sign CARE TO CARE. As the Board of Appeal stated in paragraph 19 of the contested decision, the word ‘care’ in English is both a noun and a verb meaning ‘care’ or ‘to look after’ respectively. In the field of health, that term designates the treatment given to a patient by a doctor or other health workers. Furthermore, as was also stated by the Board of Appeal, the word ‘care’ is the root of the word ‘carer’, which designates a person who looks after a sick person. It follows that that term is closely linked with the health sector. Likewise, the Board of Appeal was also right to point out in paragraph 22 of the contested decision, that the preposition ‘to’ means ‘in the direction of, towards’ in English.

36      Furthermore, in order to assess whether the mark applied for has distinctive character, the specific nature of the relevant public, which consists, in the present case, of health professionals and the next of kin of patients suffering from Alzheimer’s disease, must be taken into account. Inasmuch as the mark applied for consists of English words, the relevant public, in the present case, is English‑speaking. As the Board of Appeal pointed out, in essence, in paragraphs 20 and 21 of the contested decision and as OHIM correctly states, that public knows that the development of the disease requires progressive changes in care, in particular the change from care in a hospital environment to home care and vice versa.

37      In that specific context and in respect of the relevant English-speaking public, the Board of Appeal could reasonably conclude, in paragraph 23 of the contested decision, that the expression ‘care to care’ will be perceived as a reference to the change from one type of care to another and, therefore, as a banal expression alluding to an inherent characteristic of educational and medical services relating to Alzheimer’s disease.

38      The educational services, including caregivers’ and patients’ relatives’ support programmes relating to Alzheimer’s disease in Class 41 and the medical services, including providing medical information to caregivers and patients’ relatives relating to Alzheimer’s disease in Class 42 have the objective of adapting the care to the needs of those who suffer from Alzheimer’s disease and of informing the next of kin as well as professionals about the treatment of that disease.

39      Accordingly, it must be held that, for the relevant public and with regard to the services at issue, the expression ‘care to care’ does not have a sufficient degree of originality to be capable of indicating to the consumer the commercial origin of those services and that, therefore, it does not have distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

40      That finding is not invalidated by the applicant’s argument alleging that the mark applied for may have potential meanings other than that pointed out by the Board of Appeal.

41      In that regard, it must be borne in mind that a word sign must be refused registration under Article 7(1)(b) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 29 April 2010 in Case T‑586/08 Kerma v OHIM (BIOPIETRA), not published in the ECR, paragraph 35; see also, by analogy, concerning Article 7(1)(c) of Regulation No 207/2009, Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 32).

42      Furthermore, the applicant’s claim relating to the rather unlikely nature of the interpretation of the mark applied for favoured by the Board of Appeal must be rejected in view of the specific nature of the relevant public and the nature of the services in question, as was pointed out in paragraphs 35 to 38 above.

43      It follows that the Board of Appeal was right to find, in paragraph 24 of the contested decision, that the mark applied for was devoid of any distinctive character.

44      The second head of claim must therefore be rejected.

45      By its third head of claim, the applicant alleges that the Board of Appeal acted in a manner contrary to the case-law on slogans, in particular the judgment in Audi v OHIM, and relied on outdated decisions relating to a different subject. It again submits that, in order to understand the meaning of the slogan of which the mark applied for consists, some interpretation is necessary. In its view, it follows that the mark applied for may be registered.

46      As regards the judgment in Audi v OHIM, paragraph 57, which is cited by the applicant, states that a mark expressing an objective message may be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where the mark in question is not merely an ordinary advertising message, but possesses a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public.

47      Contrary to the applicant’s claims, the mark applied for does not possess the necessary degree of originality or resonance, requiring at least some interpretation. As has been stated in paragraph 38 above, it will be understood immediately by the relevant public as a slogan relating to the objective of the services covered by the mark applied for, namely the care required for patients suffering from Alzheimer’s disease. The mark applied for will not therefore be capable of indicating to the consumer the commercial origin of the services in question.

48      As for the judgment in BEST BUY, which the applicant submits is outdated and relates to a different subject, it must be pointed out that that judgment does indeed relate to the distinctive character of trade marks and is part of the settled case-law and that the principles set out in that judgment, which are referred to in paragraph 12 of the contested decision, have not been altered by the subsequent case‑law. Consequently, that claim is unfounded.

49      The third head of claim must also be rejected.

50      By its fourth head of claim, the applicant alleges that the Board of Appeal infringed its own previous practice. In that regard, it refers to numerous registered marks containing the term ‘care’ or having the same structure as the mark applied for. It submits that, in view of OHIM’s previous practice, the mark applied for should have been registered.

51      It is apparent from the case-law that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. Although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must 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. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Accordingly, such an 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 (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 to 77 and the case-law cited). As is apparent from paragraph 45 above, the Board of Appeal was right 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 thus the applicant cannot reasonably rely, for the purpose of casting doubt on that finding, on other registrations of Community trade marks.

52      Consequently, the fourth head of claim put forward by the applicant is unfounded.

53      In view of all of the foregoing, the single plea in law must be rejected and the action must be dismissed in its entirety.

 Costs

54      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.

55      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Novartis AG to pay the costs.

Prek

Labucka

Kreuschitz

Delivered in open court in Luxembourg on 23 January 2014.

[Signatures]