JUDGMENT OF THE GENERAL COURT (Second Chamber)

18 November 2015 (*)

(Community trade mark — Invalidity proceedings — Community word mark TRILOBULAR — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Article 52(1)(a) of Regulation No 207/2009)

In Case T‑558/14,

Research Engineering & Manufacturing, Inc., established in Middletown, Rhode Island (United States), represented by S. Malynicz, G. Hollingworth, Barristers, K. Gilbert and M. Gilbert, Solicitors,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Nedschroef Holding BV, established in Helmond (Netherlands),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 12 May 2014 (Case R 442/2013-4), relating to invalidity proceedings between Nedschroef Holding BV and Research Engineering & Manufacturing, Inc.,

THE GENERAL COURT (Second Chamber),

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

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 24 July 2014,

having regard to the response lodged at the Court Registry on 7 November 2014,

further to the hearing on 15 July 2015,

gives the following

Judgment

 Background to the dispute

1        On 30 October 1997, the applicant, Research Engineering & Manufacturing, Inc., 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p.1), as amended (replaced by 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 mark was sought for the word sign TRILOBULAR.

3        The goods in respect of which registration was sought are in Class 6 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: ‘Metal threaded fasteners’.

4        The mark was registered on 26 April 1999 and published on 21 June 1999.

5        On 30 December 2011, Nedschroef Holding BV brought an application for a declaration of invalidity of the Community trade mark pursuant to Article 52(1)(a) of Regulation No 207/2009. The grounds relied on were those set out in Article 7(l)(b) and (c) of that regulation.

6        By decision of 18 January 2013, the Cancellation Division rejected the application for a declaration of invalidity and ordered Nedschroef Holding to pay the costs.

7        On 5 March 2013, Nedschroef Holding filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

8        By decision of 12 May 2014 (‘the contested decision), the Fourth Board of Appeal upheld the appeal and declared the Community trade mark invalid. The Board of Appeal held, in essence, first, in paragraph 14 of the contested decision, that the relevant public consisted of the general consumer and a professional public, who were either German-speaking or anglophone. Next, in paragraphs 15 and 16 of that decision, the Board of Appeal held that the documents submitted by Nedschroef Holding showed that, since 1982, the word ‘trilobular’ described the nature and technical function of ‘metal threaded fasteners’, which is a more generic term for screws, and the fact that the cross section of the fastener or screw is triangular in shape, that is to say, trilobular. The Board of Appeal took the view, in paragraph 18 of the contested decision, that, even if the word ‘trilobular’ might evoke the contested mark in the minds of certain consumers, that does not render the word non-descriptive as regards the goods in question. Furthermore, in patent specifications the term is used in an entirely descriptive meaning. The Board of Appeal also observed, in the same paragraph, that the use by the applicant of the contested mark could only be taken into account in the framework of Article 7(3) or Article 52(2) of Regulation No 207/2009, (distinctive character acquired) or in the framework of Article 51(1)(b) read in conjunction with Article 7(1)(d) of that regulation, in an attempt to prevent that word becoming generic, which is no longer relevant to the present case, as the application for a declaration of invalidity is not based on those grounds. Finally, in paragraph 19 of the contested decision, in response to the applicant’s argument that the root word ‘trilobular’ had not been proven to exist on the ground that the German documents provided refer only to ‘Trilobulare’, ‘trilobularen’ or ‘Trilobularität’ but not to the word ‘trilobular’, the Board of Appeal stated that those documents always referred to the same meaning of the word ‘trilobular’, namely a screw diameter, and had essentially used the adjective ‘trilobular’ in accordance with the German grammar rules governing adjectives.

9        The Board of Appeal held, in paragraph 21 of the contested decision, that, since the contested mark was descriptive of the characteristics of goods, it was necessarily devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, and it accordingly declared the contested mark invalid.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

11      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      In support of its application for annulment of the contested decision, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009.

13      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. In addition, Article 7(2) of Regulation No 207/2009 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

14      Article 52(1)(a) of Regulation No 207/2009 provides that ‘a Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where the Community trade mark has been registered contrary to the provisions of Article 7’.

15      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (see judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31 and the case-law cited, and of 7 November 2014 in Kaatsu Japan v OHIM (KAATSU), T‑567/12, EU:T:2014:937, paragraph 27 and the case-law cited).

16      Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark 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 in OHIM v Wrigley, paragraph 15 above, EU:C:2003:579, paragraph 30, and KAATSU, cited in paragraph 15 above, EU:T:2014:937, paragraph 28).

17      It follows that, in order 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 reflection, a description of the goods and services in question or one of their characteristics (see judgment in KAATSU, cited in paragraph 15 above, EU:T:2014:937, paragraph 29 and the case-law cited).

18      It should also be noted that a sign’s descriptive nature can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (see judgment of 27 February 2002 in Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR, EU:T:2002:41, paragraph 38, and KAATSU, cited in paragraph 15 above, EU:T:2014:937, paragraph 30).

19      In the first place, the applicant submits that the Board of Appeal erred in that, by identifying the relevant public as being both ordinary consumers and specialist professionals, it limited its reasoning to readers of professional publications and applications for patents and utility models. Moreover, in its view, there is a principle that, where the goods are intended for all consumers, the relevant public is composed of the average consumer, reasonably well-informed and reasonably observant and circumspect, which the Board of Appeal did not apply in the present case.

20      In that regard, it must be stated that, as indeed OHIM correctly notes, although, as stated in paragraph 14 of the contested decision, the goods in question are intended for professionals and general consumers, in particular those engaged in ‘do it yourself’ projects, the former represent a larger part of the relevant public than the latter, in so far as they use those goods on a daily basis and those goods are a necessary part of the normal and regular course of their professional activity.

21      In fact, it cannot be claimed that professionals only rarely use goods such as metal threaded fasteners, which, on the contrary, are included in the composition of all construction projects and all production activity in general.

22      Consequently, the Board of Appeal did not err in law when it examined whether part of the relevant public, namely professionals, and not general consumers, would consider that the contested mark was descriptive, in particular, of a quality or characteristic of the goods covered by that trade mark application (judgment of 16 December 2010 in Fidelio v OHIM (Hallux), T‑286/08, ECR, EU:T:2010:528, paragraph 56; see also, to that effect, judgment of 17 September 2008 in Prana Haus v OHIM (PRANAHAUS), T‑226/07, EU:T:2008:381, paragraphs 26 and 35).

23      Furthermore, it should be recalled that OHIM, to ensure the effectiveness of the prohibition on registration of descriptive marks contained in Article 7(1)(c) of Regulation No 207/2009, which seeks to ensure the option, for all economic operators, to freely use the terms, even technical terms, which they market, is entitled to take account of the presence, within the general public, of a narrower class, composed of persons to whom the goods or services covered by the mark for which registration is sought are particularly intended (see, to that effect, judgment of 21 November 2013 in Heede v OHIM (Matrix-Energetics), T‑313/11, EU:T:2013:603, paragraph 42 and the case-law cited).

24      The applicant disputes that analysis and claims, relying on the judgment of 12 March 2008 in Compagnie générale de diététique v OHIM (GARUM) (T‑341/06, EU:T:2008:70), that the descriptive character ought to have been examined solely in relation to the average consumer, who is reasonably well-informed and circumspect, and not in relation to the professional consumer.

25      However, the circumstances of the case which gave rise to the judgment in GARUM, cited in paragraph 24 above (EU:T:2008:70), are distinguished from the facts of the present case in that, first, Article 7(1)(b) of Regulation No 207/2009 was relevant and, second, the descriptive character of the word ‘garum’ in respect of the professional public was based on a mere presumption.

26      In the judgment in GARUM, cited in paragraph 24 above (EU:T:2008:70), the Court in fact annulled the decision of the Board of Appeal, which had found that the word ‘garum’ was not distinctive, on the ground that, in its view, that word was not understood by the general public. Accordingly, it held, in paragraph 36 of that judgment, that the Board of Appeal had erred by carrying out an analysis with regard only to the specialist and professional public, even though that specialist public, made up of restaurateurs, was also part of the relevant public.

27      However, it is also clear from the judgment in GARUM, cited in paragraph 24 above (EU:T:2008:70), that, even in respect of professional restaurateurs, the mark GARUM could not be regarded as being devoid of distinctive character, since those restaurateurs were not familiar with the word ‘garum’, and the Board of Appeal merely limiting itself, according to paragraph 41 of that judgment, to inferring the alleged knowledge of the meaning of that word on the part of restaurateurs from the presumption, which was pure conjecture, in general and in the abstract, that it would be ‘legitimate to require some familiarity [on the part of restaurateurs] with specific words relatively unknown to the general public.’

28      Accordingly, the Court criticised the Board of Appeal, in the judgment in GARUM, cited in paragraph 24 above (EU:T:2008:70), for having refused the registration, although, according to paragraph 41 of that judgment, it was not even clear that restaurateurs were actually familiar with the word ‘garum’ and that neither the Board of Appeal nor OHIM during the proceedings had put forward specific evidence to establish that that word was known and used in the European gastronomy sector with its original meaning.

29      Therefore, contrary to what the applicant claims, by not basing its analysis on a mere presumption but on accurate and objective data, the Board of Appeal has not departed from that judicial precedent.

30      Accordingly, it is necessary, for the purpose of applying Article 7(1)(c) of Regulation No 207/2009, to consider, on the basis of a given meaning of the sign in question, whether, at the time of registration, from the point of view of the relevant public, there was a sufficiently direct and specific relationship between the contested mark and the goods in respect of which registration has been granted (see, to that effect, judgment in KAATSU, cited in paragraph 15 above, EU:T:2014:937, paragraph 32 and the case-law cited).

31      As regards the word ‘trilobular’, which is composed of the element ‘tri’, that is to say, a prefix derived from Latin and Greek, and the element ‘lobular’, namely a word derived from Latin, it refers, in relation to the goods in question, to the fact that the screw has three lobes. That is borne out by the fact, which the applicant does not dispute and which it moreover confirmed at the hearing, in response to a question from the Court, that, in German, the words ‘trilobularen’, ‘Trilobularität’ and ‘Trilobulare’ exist with the same meaning as the word ‘trilobular’, namely ‘composed of three lobes’ or ‘tri lobular’.

32      Therefore, the word ‘trilobular’ could be understood not only by German-speaking professionals but also professionals from other Member States for whom that word could refer to the expression ‘tri lobular’ and therefore describe one of the characteristics or qualities of the goods in question. Accordingly, having regard to those professionals, that word would immediately be perceived as describing the fact that the screw is made up of three lobes, and thus describes a quality or characteristic, which is, moreover fundamental, of those goods.

33      As is clear from paragraphs 16 and 17 of the contested decision, Nedschroef Holding has, by tangible evidence, which has, moreover not been challenged as to its relevance by the applicant, established that as early as 1982 the word ‘trilobular’ could be used descriptively with respect to a screw whose threaded body is geometrically trilobal.

34      Even though the Board of Appeal did not consider it necessary to cite all of the sources which it had concerning the descriptive character of the contested mark, as is apparent from the last sentence of paragraph 16 of the contested decision, it is clear that all the information contained in that decision actually demonstrates that, before that mark was registered, it already had a descriptive character.

35      Furthermore, it should be noted that, more than the ‘function’ or the ‘nature’ which the contested mark could describe, as stated by the Board of Appeal in paragraph 15 of the contested decision, that mark rather describes a characteristic, quality or even the shape of the goods in question, namely the fact that the screws are composed of three lobes.

36      In the second place, as regards the level of attention of the relevant public, the applicant claims that that public will not pay a lot of attention when purchasing the goods in question.

37      In that regard, suffice it to state that, even assuming that the general public pays a normal level of attention when purchasing the goods in question, a part of the relevant public, namely the specialist public, may demonstrate a higher level of attention when buying large quantities of such products which might prove to be unusable, since trilobal screws cannot be incorporated in all types of screw, as is clear from the illustration in paragraph 17 of the contested decision. It follows that, as, moreover, OHIM stated at the hearing, professionals will pay even more attention where that purchase involves very large quantities. Furthermore, it should be added that the public which is aware of the words ‘Trilobulare’, ‘trilobularen’ or ‘Trilobularität’ may be led, when faced with such goods, immediately to make a link between the contested mark and an essential characteristic of those goods, namely the fact, rightly described by the Board of Appeal in paragraph 17 of the contested decision, that the screw, viewed from above, is not exactly circular, but has lobes.

38      Therefore the Board of Appeal did not err when it found that the contested mark described the fact that the cross section of a fastener or screw had a triangular, that is to say trilobal, shape.

39      In the third place, the applicant claims that the Board of Appeal wrongly considered the use of the word ‘trilobular’ in technical publications, such as applications for patents and utility models, which included evidence of some isolated cases of the use of that word.

40      In that regard, it should be borne in mind that by virtue of the presumption of validity which the contested mark receives, OHIM’s obligation, under Article 76(1) of Regulation No 207/2009, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for a Community trade mark carried out by the Examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings, as the registered Community trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before OHIM the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013 in Fürstlich Castell’sches Domänenamt v OHIM — Castel Frères (CASTEL), T‑320/10, ECR (Extracts), EU:T:2013:424, paragraph 28).

41      However, although the presumption of validity of the registration limits OHIM’s obligation to examine the relevant facts, that presumption cannot, however, prevent it, in particular in view of the evidence relied on by the party challenging the validity of the contested mark, from basing its decision on those arguments and on any evidence attached by that party to its application for a declaration of invalidity (see, to that effect, judgment of 15 January 2013 in Welte-Wenu v OHIM — Commission (EUROPEAN DRIVESHAFT SERVICES), T‑413/11, EU:T:2013:12, paragraph 24 and the case-law cited).

42      Thus, where, as in the present case, Nedschroef Holding disputed the validity of the mark concerned by putting forward various pieces of evidence in support of the application for a declaration of invalidity, it was for the Board of Appeal to examine that evidence, which it did.

43      Furthermore, it must be found that the evidence put forward in support of the application for a declaration of invalidity establishes, as is apparent from paragraphs 15 to 17 of the contested decision, inter alia that, as early as 1982, the word ‘trilobular’ described, in particular, as is apparent from paragraph 35 above, the nature and the technical function of the goods in question, which is a more generic expression for screws. Accordingly, on the basis of that evidence the Board of Appeal was entitled to find that the word ‘trilobular’ described the fact that the cross section of a fastener or screw had a triangular, that is to say trilobal, shape.

44      As regards the applicant’s argument that the contested mark is not descriptive, in so far as the matters adduced in support of the application for a declaration of invalidity would not be familiar to a very wide public, and not even to a specialist public, it cannot be upheld.

45      It must be recalled that is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation No 40/94 actually be in use at the time of the application for registration in a way that is descriptive of the goods or services in respect of 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 (judgment in OHIM v Wrigley, cited in paragraph 15 above, paragraph 32; see also, by analogy, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 97).

46      However, the evidence in the file before OHIM in fact allows it to be found that the contested mark already described, on the date of the application for registration, a characteristic or quality of the products in question, so that that designation may be used for descriptive purposes.

47      In the fourth place, the applicant claims, on the basis of paragraph 36 of the judgment of 5 November 2008 in Neoperl Servisys v OHIM (HONEYCOMB) (T‑256/06, EU:T:2008:475), that the fact that a word may have a technical meaning is not an indication that the mark is descriptive.

48      It is clear that the applicant’s interpretation of the judgment in HONEYCOMB, cited in paragraph 47 above (EU:T:2008:475), is manifestly incorrect.

49      In fact, in the judgment in HONEYCOMB, cited in paragraph 47 above (EU:T:2008:475), the applicant claimed that the lack of specific meaning on the technical level of the trade mark for which registration was sought necessarily resulted in its lack of descriptive character. In paragraph 36 of that judgment the Court simply held that the lack of specific meaning in strictly technical terms was not relevant in the context of the assessment of the descriptive character, which does not mean that the existence of a technical meaning cannot have as its corollary the existence of a descriptive character.

50      In any event, it must be held that, in the present case, the contested mark has a specific meaning on the technical level in the light of the goods in question and that that necessarily means that that mark is descriptive of those goods.

51      It follows from all of the foregoing considerations that the single plea cannot be upheld, and the action must therefore be dismissed.

 Costs

52      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party must 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 Research Engineering & Manufacturing, Inc., to bear the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 18 November 2015.

[Signatures]