CELEX: 62007TJ0160
Community trade mark
Invalidity proceedings
Community word mark COLOR EDITION
Absolute ground for refusal
Descriptive character
Article 7(1)(c) of Regulation (EC) No 40/94
Interest in bringing proceedings
Article 55 of Regulation No 40/94

Grounds
Background to the dispute
1. On 9 December 2002, the applicant, Lancôme parfums et beauté & Cie SNC, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The trade mark for which registration was sought is the word sign COLOR EDITION.
3. The goods for which registration is sought are in Class 3 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 for all of the applications: ‘Cosmetic and make-up preparations’.
4. The mark applied for was registered on 11 February 2004 and published in the Community Trade Marks Bulletin  of 19 April 2004.
5. On 12 May 2004, the law firm Norton Rose Vieregge lodged an application for a declaration of invalidity of the word mark COLOR EDITION on the basis of Article 51(1)(a) of Regulation No 40/94 and of Article 7(1)(b) and (c) of that regulation.
6. On 21 December 2005, the Cancellation Division dismissed the application for a declaration of invalidity of the word mark COLOR EDITION.
7. On 9 February 2006, the law firm CMS Hasche Sigle, acting in place of Norton Rose Vieregge, lodged an appeal against the decision of the Cancellation Division under Articles 57 to 62 of Regulation No 40/94.
8. By decision of 26 February 2007 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal.
9. The contested decision is based on the following reasoning. First, the Board of Appeal noted that the action brought by CMS Hasche Sigle was admissible on the basis of Article 55(1)(a) of Regulation No 40/94, since the distinction made by the applicant between the capacity to bring proceedings and an interest in bringing proceedings does not appear anywhere in Regulation No 40/94 and since Article 7(1)(b) and (c) of Regulation No 40/94 pursues an aim of general interest which enables actions for a declaration of invalidity based on that article to be brought by the widest possible range of parties. Next, the Board of Appeal concluded that the word mark COLOR EDITION was descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94 since, on the one hand, the combination of the words ‘color’ and ‘edition’ imparted a message immediately and directly understood by the relevant public as referring to a range of cosmetic or make-up products in different tones of colour and, on the other, those terms were likely to be used by competitors to describe certain qualities of their products and should therefore remain in the public domain. Finally, the Board of Appeal stated that since the word mark at issue was descriptive, it was also devoid of any distinctive character under Article 7(1)(b) of Regulation No 40/94.
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 action, the applicant puts forward three pleas in law alleging breach of Article 55(1)(a), of Article 7(1)(c) and of Article 7(1)(b) respectively of Regulation No 40/94.
The first plea, alleging breach of Article 55(1)(a) of Regulation No 40/94
Arguments of the parties
13. By its first plea, the applicant submits that, by declaring the application for a declaration of invalidity brought by CMS Hasche Sigle admissible, when the latter had not demonstrated that it had an interest in bringing proceedings, the Board of Appeal breached Article 55(1)(a) of Regulation No 40/94.
14. In support of that assertion, the applicant submits, firstly, that the Board of Appeal could not state that an interest in bringing proceedings is implicit in the wording of Article 55(1)(a) of Regulation No 40/94. In the applicant’s opinion, that statement disregards the general principle of law that an interest in bringing proceedings must be demonstrated in any court proceedings.
15. The requirement for an interest in bringing proceedings in any action follows, firstly, from the procedural provisions of Regulation No 40/94. In particular, according to the applicant, since the requirement for an interest in bringing proceedings is not clearly apparent from the wording of Article 55(1)(a) of Regulation No 40/94, the Board of Appeal, pursuant to Article 79 of Regulation No 40/94, should have referred to the general principles of law applicable to Member States. In all Member States, without exception, the only parties able to bring legal proceedings are those who have a legitimate interest in the success or dismissal of a claim. Secondly, the requirement for an interest in bringing proceedings in any action follows from the EC Treaty, in particular from Articles 230 EC, 232 EC and 236 EC, as well as from the case-law of the Court of Justice and of the Court of First Instance relating thereto.
16. Secondly, the applicant alleges that OHIM could not claim that the Community case-law relied upon by the applicant to justify the requirement for an interest in bringing proceedings does not relate to the field of trade marks, but rather to other fields such as agriculture, customs law, and the civil service. In Case T‑129/00 Procter & Gamble  v OHIM (Rectangular tablet with incrustation)  [2001] ECR II‑2793, paragraph 12, the Community Court found that an interest in bringing proceedings is necessary in the context of an action brought under Article 63 of Regulation No 40/94. That article provides precisely for the possibility of an action against decisions of the Boards of Appeal before the Community Courts.
17. In addition, the applicant notes that the Community case-law relating to actions for annulment applies to OHIM and that OHIM is to comply with the principles relating to the requirement for an interest in bringing proceedings in the actions brought under Article 63 of Regulation No 40/94. In that regard, OHIM itself requires an interest in bringing proceedings, in the form of a specific legitimate interest, in the context of a statement by the applicant on the grounds of invalidity claimed (decision of the Cancellation Division of OHIM of 3 May 2001 relating to the mark AROMATONIC).
18. Thirdly, the applicant submits that the existence of an interest in bringing proceedings requires that the act challenged affect directly, individually and personally an applicant for a declaration of invalidity.
19. OHIM claims that the plea should be rejected.
Findings of the Court
20. In the context of the first plea, the Court must ascertain whether Article 55(1)(a) of Regulation No 40/94 makes the admissibility of applications for a declaration of invalidity subject to demonstration of an interest in bringing proceedings. In that regard, it is appropriate to analyse the wording, scheme and purpose of Article 55(1) of Regulation No 40/94.
21. Firstly, it is apparent from the wording of Article 55(1)(a) of Regulation No 40/94 that an application for a declaration of invalidity of a Community trade mark, based in particular on the descriptive character of the mark at issue within the meaning of Article 7(1)(c) of Regulation No 40/94, or on its lack of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, may be submitted to OHIM ‘by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued’. Article 55(1)(a) of Regulation No 40/94 thus makes no reference to an interest in bringing proceedings.
22. Next, it is apparent from the scheme of Article 55(1) of Regulation No 40/94 that an interest in bringing proceedings is not required in the context of an application for a declaration of invalidity such as that at issue in the present case. That article provides for applications for a declaration of invalidity based on absolute grounds for invalidity and those based on relative grounds for invalidity to be handled differently.
23. Thus, Article 55(1)(a) of Regulation No 40/94, which deals, inter alia, with applications for declarations of invalidity based on absolute grounds for invalidity, does not mention, as has been pointed out in paragraph 21 above, any requirement that the applicant for a declaration of invalidity demonstrate the existence of an interest in bringing proceedings. At most, it requires that an application for a declaration of invalidity be brought by a natural or legal person or by a group or body which has the capacity to sue and be sued.
24. However, Article 55(1)(b) and (c) of Regulation No 40/94, which relates to applications for declarations of invalidity based on relative grounds for invalidity, provides that those applications may be made only by proprietors of marks or of earlier rights and by licensees authorised by proprietors of trade marks, or by persons who are authorised to exercise earlier rights. In other words, only persons having an interest in bringing proceedings are entitled to bring the applications for declarations of invalidity referred to in Article 55(1)(b) and (c) of Regulation No 40/94.
25. It is therefore apparent from the scheme of Article 55(1) of Regulation No 40/94 that the legislature intended to permit any natural or legal person and any group or body having the capacity to sue or be sued to bring applications for a declaration of invalidity based on absolute grounds for invalidity whereas, with regard to applications for a declaration of invalidity based on relative grounds for invalidity, it expressly restricted the group of potential applicants for a declaration of invalidity.
26. Finally, that analysis is corroborated by a teleological interpretation of the provisions in question. Unlike relative grounds for refusal, which protect only the private interests of proprietors of certain earlier rights, the absolute grounds for refusal set out in Article 7(1) of Regulation No 40/94 are based on different general interests (see, to that effect, Case C‑329/02 P SAT.1  v OHIM  [2004] ECR I‑8317, paragraph 25). In order to ensure the widest protection for those general interests, it must be possible for the widest possible range of persons to rely on the absolute grounds for refusal. That is why Article 55(1)(a) of Regulation No 40/94 merely requires the applicant for a declaration of invalidity to have legal personality or the capacity to sue or be sued, but does not require him to demonstrate an interest in bringing proceedings.
27. That analysis is not called into question by the arguments put forward by the applicant. With regard, on the one hand, to the argument that the requirement for an interest in bringing proceedings follows from a combined reading of Article 55(1)(a) and Article 79 of Regulation No 40/94, it should be recalled that the latter article provides that, in the absence of procedural provisions in that regulation or the implementing regulation, OHIM is to take into account the principles of procedural law generally recognised in the Member States. Clearly, Article 55(1)(a) of Regulation No 40/94 is the procedural provision applicable, within the meaning of Article 79 of Regulation No 40/94, to applications for a declaration of absolute invalidity referred to in Article 51 of Regulation No 40/94. Since that procedural provision is unambiguous, Article 79 of Regulation No 40/94 does not apply in the present case.
28. In addition, even if that article were applicable in the present case, it should be noted that the applicant failed to show that, as it alleges, court proceedings are available, in all Member States without exception, to those who have a legitimate interest in the success or dismissal of a claim. In its pleadings, the applicant merely referred to French law and, more particularly, to French trade mark law.
29. Accordingly, the applicant’s argument concerning Article 79 of Regulation No 40/94 must be rejected.
30. With regard, on the other hand, to the other arguments put forward by the applicant, according to which, in essence, the case-law relating to Articles 230 EC, 232 EC and 236 EC, including the case-law relating to the requirement that the applicant have a direct and individual interest, is applicable to the present case, it should be noted, as OHIM pointed out, that that case-law is not relevant to the present case either directly or by analogy.
31. Firstly, Articles 230 EC, 232 EC and 236 EC are not applicable to the present case. Articles 230 EC and 232 EC concern actions for annulment and actions for failure to act brought against the acts or omissions of only those institutions listed in those provisions, which do not include OHIM, and Article 236 EC concerns staff cases.
32. Next, the actions referred to in Articles 230 EC, 232 EC and 236 EC are court actions, whereas an application for a declaration of invalidity provided for in Article 55(1)(a) of Regulation No 40/94, which must be brought before OHIM, is an administrative procedure. In that regard, the reference to Rectangular tablet with incrustation , paragraph 16 above, paragraph 12, is not relevant, since that judgment concerns court actions brought against decisions of the Boards of Appeal of OHIM before the Community Courts pursuant to Article 63 of Regulation No 40/94.
33. Finally, with regard to the reference to the decision of the Cancellation Division of OHIM of 3 May 2001 concerning the mark AROMATONIC, it should be noted that decisions concerning registration of a sign as a Community mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards (see, by analogy, Case T‑106/00 Streamserve  v OHIM (STREAMSERVE)  [2002] ECR II‑723, paragraph 66).
34. Furthermore, the abovementioned decision does not permit the conclusion that the case-law relating to the admissibility of actions brought under Articles 230 EC, 232 EC and 236 EC is applicable to the admissibility of applications for a declaration of invalidity brought before OHIM under Article 55(1)(a) of Regulation No 40/94. In that decision, as OHIM has noted in its pleadings, the question before the Cancellation Division was whether the application for a declaration of invalidity was devoid of purpose because the mark against which that application was made had been withdrawn. That decision cannot, therefore, be interpreted as recognising the need to demonstrate an interest in bringing proceedings when filing an application for a declaration of invalidity.
35. Having regard to the foregoing and in view of the fact that it is not contested that CMS Hasche Sigle may be treated as a legal person, it is appropriate to consider that the Board of Appeal was correct to declare its application for a declaration of invalidity admissible.
36. Accordingly, the first plea must be dismissed as unfounded.
The second plea, alleging breach of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
37. In the context of the second plea, the applicant submits, firstly, that the Board of Appeal disregarded the difference between a suggestive or evocative mark which can indeed be protected and a descriptive mark. The combination of the words ‘color’ and ‘edition’ does not impart a message immediately and directly understood by the relevant public and is therefore not descriptive. The mark COLOR EDITION merely makes indirect reference to certain characteristics of the goods claimed.
38. Secondly, the applicant points out that intellectual effort is required to deduce from the terms ‘color’ and ‘edition’ the characteristics, properties and nature of the goods claimed. It is apparent from case-law that a mark must be regarded as being merely suggestive and not as being descriptive where an intellectual effort is necessary on the part of the relevant public to translate a suggestive or emotional message into a rational piece of information. In the present case, as the Cancellation Division held in its decision of 21 December 2005, the association of the terms ‘color’ and ‘edition’ is neither banal nor obvious, since it is not clear whether it refers to goods offered in coloured packaging, goods incorporating colour or those intended to give colour.
39. OHIM claims that the plea should be rejected.
Findings of the Court
40. Under Article 7(1)(c) of Regulation No 40/94, registration is to be refused for ‘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’.
41. It is apparent from case-law that the signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (see Case T‑316/03 Münchener Rückversicherungs-Gesellschaft  v OHIM (MunichFinancialServices)  [2005] ECR II‑1951, paragraph 26; Case T‑19/04 Metso Paper Automation  v OHIM (PAPERLAB)  [2005] ECR II‑2383, paragraph 24, and case-law cited; and Case T‑207/06 Europig  v OHIM (EUROPIG)  [2007] ECR II‑1961, paragraph 26).
42. It follows that, 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 in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB , paragraph 41 above, paragraph 25, and case-law cited, and EUROPIG , paragraph 41 above, paragraph 27).
43. In addition, a trade mark composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94, unless there is a perceptible difference between the mark applied for and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the mark applied for creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed (see PAPERLAB , paragraph 41 above, paragraph 27, and case-law cited).
44. It is also important to bear in mind that the distinctiveness of a mark may be assessed, firstly, only in relation to the understanding of the mark by the relevant public and, secondly, in relation to the goods or services concerned (see MunichFinancialServices , paragraph 41 above, paragraph 26, and EUROPIG , paragraph 41 above, paragraph 30).
45. In the present case, the goods concerned are cosmetic and make-up products which are likely to be purchased by all consumers. The relevant public is therefore the general public, reasonably well informed and reasonably observant and circumspect (Case C‑299/99 Philips  [2002] ECR I‑5475, paragraphs 59 and 63, and Case T‑281/02 Norma Lebensmittelfilialbetrieb  v OHIM (Mehr für Ihr Geld)  [2004] ECR II‑1915, paragraph 27). As the word mark registered is made up of two American English words, the relevant public is an English-speaking public, or even one which is not so but which has sufficient knowledge of the English language (see, to that effect, Case T‑320/03 Citicorp  v OHIM (LIVE RICHLY)  [2005] ECR II‑3411, paragraph 76).
46. Accordingly, it is appropriate to examine whether, from the point of view of that public, there is a sufficiently direct and concrete relationship between the sign COLOR EDITION and the goods for which registration was sought.
47. In that regard, it is appropriate to note that the American English term ‘color’ indicates a colour or shade and is frequently used in the cosmetics industry to designate the use or characteristics of goods. The word ‘edition’ refers not only to the world of literature or of the press, but also means, as the Board of Appeal observed, a range of a product in one or more versions or forms. Just like the term ‘color’, it is also used in the cosmetics industry.
48. The view must therefore be taken that the sign COLOR EDITION is exclusively composed of indications designating certain characteristics of the goods in question. As the Board of Appeal held, that sign imparts a message which will immediately and directly be understood by the relevant public, that is to say that it denotes a range of cosmetic or make-up products in different tones of colour.
49. In addition, it must be noted that the association of the terms ‘color’ and ‘edition’ is not unusual but a normal construction in light of the lexical rules of the English language. The mark applied for does not therefore create, for the target public, an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it is composed to alter its meaning or scope. Accordingly, the view must be taken, endorsing that of the Board of Appeal, that no intellectual effort will be required to understand that message and that the simple juxtaposition of the words in question does not alter the descriptive character of the individual elements of the sign.
50. It follows that, taken as a whole, the word mark COLOR EDITION has a sufficiently direct and concrete relationship with the goods which it covers. The Board of Appeal was therefore correct to find that it is descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94. The second plea must therefore be dismissed as unfounded.
51. Since Article 7(1) of Regulation No 40/94 makes it very clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (Case C‑104/00 P DKV  v OHIM  [2002] ECR I‑7561, paragraph 29, and EUROPIG , paragraph 41 above, paragraph 45), it is no longer necessary to consider the third plea raised by the applicant alleging breach of Article 7(1)(b) of that regulation.
52. Accordingly, the application must be dismissed in its entirety.
Costs
53. Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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.
Operative part
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Lancôme parfums et beauté & Cie SNC to bear its own costs and pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs).