Judgment — ECLI:EU:T:2008:512
Date: 2008-11-19
Language of the case: English
Court formation: Eighth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Admissibility and examination of applications, forms of order sought and pleas in law;Actions before the Community Courts;Word marks
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Finland

summary form, provided that the statement is coherent and comprehensible (see CARGO PARTNER, paragraph 33 above, at paragraph 27, and case-law cited). 35 In the present case, the application does not fulfil the conditions laid down in Article 21 of the Statute of the Court, applicable to proceedings before the Court of First Instance pursuant to the first paragraph of Article 53 of the Statute, and in Article 44(1)(c) of the Rules of Procedure of the Court of First Instance. The applicant does not in fact deny that the sign for which registration is sought is descriptive of the goods in question, but argues only, in reliance on the evidence which it submitted to the Finnish Patents Office and on the decision of that office to register the sign RAUTARUUKKI in Finland, that the grounds for refusal contained in Article 7(1)(b) and (c) of Regulation No 40/94 cannot be used against it on account of Article 7(3) of Regulation No 40/94, which provides that those provisions, inter alia, are not to apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. 36 Nor, it is to be noted, did the applicant in the proceedings before OHIM deny the descriptive character of the sign in question and the fact that it was devoid of any distinctive character as such, since it stated that the distinctive character of the sign in question derived from its use. In its letter of 30 November 2004, in response to the examiner’s communication of 30 September 2004, the applicant wrote: ‘The descriptive meaning of the Finnish word “rautaruukki” is basically not denied. It is denied, however, that the applied mark would not comply with Article 7(1)(b) and (c), because the Applicant has obtained a sole right to the trademark and the trade name RAUTARUUKKI based on a very long-time and extensive use and establishment of RAUTARUUKKI in respect of the goods in class 6 covered by the present application.’ 37 It follows from the foregoing that the application does not contain a brief statement of the applicant’s objections to the contested decision based on the possible infringement by the Board of Appeal of Article 7(1)(b) and (c) of Regulation No 40/94, with the result that the first and second pleas in law must be declared inadmissible. Third plea in law alleging infringement of Article 7(3) of Regulation No 40/94 Arguments of the parties 38 The applicant points out that the provisions of Article 7(1)(b) and (c) of Regulation No 40/94 are not to apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. According to the applicant, the Finnish registration of the mark RAUTARUUKKI, as a result of its distinctive character acquired by use, precludes any third party from using it, with the consequence that there is no reason to retain this term for use by third parties. Accordingly, to dismiss the request for registration of the mark would not only be a legal absurdity but would also contravene every principle of procedural economy, since the applicant would be obliged to undertake an irrational conversion of its application for registration or to file another application. 39 The applicant points out that, after the Second World War, the Republic of Finland was ordered to pay heavy war indemnities to the former Soviet Union, consisting mainly of vehicles and metal construction goods. Since that had the effect of limiting resources of steel and metal raw materials, the Finnish State decided, at the end of the 1950s, to set up a State-owned company with the task of producing the steel required by the metal industry. The applicant was accordingly established in 1960 and is generally known to Finnish consumers and traders. 40 Having regard to all the items of evidence provided to the Court and referred to in paragraph 15 above, the applicant claims to have established beyond any possible doubt that the sign RAUTARUUKKI had become distinctive and that it was therefore eligible for registration in respect of goods in Class 6 in Finland, under Article 7(3) of Regulation No 40/94, on account of the very extensive and long-term use of that sign and the history of the applicant as the main engine of Finnish industry. 41 The applicant claims finally, in its letter of 17 January 2007, which has been placed on the case file, that, in a decision concerning the sign JALLU, OHIM stated that the registration of that sign in Finland had to be given great weight even though that registration took place on the basis of the use of the mark, and even though the decisions of national authorities are not binding on OHIM. 42 OHIM states that it stands by its position that the contested decision was correct at the time of its adoption and calls upon the wisdom of the Court to provide guidance, first, as to whether or not the decision of the Finnish Patents Office should be treated as admissible new evidence and, second, as to whether it would be appropriate, for reasons of procedural economy, for the new facts which are referred to therein to be remitted to the Board of Appeal for assessment. Findings of the Court 43 Article 7(3) of Regulation No 40/94 provides that the absolute grounds for refusal do not preclude the registration of a trade mark if it has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) of Regulation No 40/94, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d), which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (Shape of a bottle of beer, paragraph 21 above, at paragraph 41, and Shape of a sweet, paragraph 21 above, at paragraph 55). 44 First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data, such as specific percentages (see Shape of a sweet, paragraph 21 above, paragraph 56, and case-law cited). 45 Second, in order to have the registration of a trade mark accepted under Article 7(3) of Regulation No 40/94, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see Shape of a sweet, paragraph 21 above, at paragraph 57, and case-law cited). 46 Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the significance of the investments by the undertaking to promote it; the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies the goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) of Regulation No 40/94 is satisfied (see Shape of a sweet, paragraph 21 above, at paragraph 58, and case-law cited). 47 Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is sought and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see Shape of a sweet, paragraph 21 above, paragraph 59, and case-law cited). 48 It is in the light of the foregoing that it must be considered whether, in the present case, the Board of Appeal erred in law in ruling out the applicant’s argument alleging that the mark applied for should have been accepted for registration under Article 7(3) of Regulation No 40/94. 49 First, it must be pointed out that, for the reasons given in paragraphs 19 to 22 above, the affidavits from the Finnish Central Chamber of Commerce and from all local chambers of commerce (except one) and from 92 companies, and the Finnish registration of the word mark RAUTARUUKKI for the goods in question in the present case, cannot be regarded as admissible. 50 The applicant cannot claim that, by taking into consideration only the evidence submitted to OHIM, it has proved that distinctiveness has been acquired through use. It must be held that, as pointed out by the Board of Appeal in paragraph 20 of the contested decision, that evidence is clearly insufficient to establish distinctiveness through use. 51 That evidence thus consists of nothing more than the documents recounting the history of the company in Finland, an extract from the Companies Register showing the registration of Rautaruukki in 1960, the results of a search in and an extract from the Trade Register which refers to Rautaruukki International Oyj, a copy of the page in the telephone directory which contains the contact details of Rautaruukki, and a page concerning a trade mark called Rautaruukki Fastjoint on unheaded paper, without any further details or information, and several articles on registration of trade marks and company names in Finland. The Board of Appeal’s inference, at paragraph 20 of the contested decision, was therefore correct, namely that while that evidence was appropriate to establish the use of the mark applied for in Finland and its registration in the Trade and Companies Registers, it did not, on the other hand, establish distinctiveness in consequence of use within the meaning of Article 7(3) of Regulation No 40/94 and did not permit the inference that the relevant public in Finland associates the sign RAUTARUUKKI uniquely with the applicant’s goods falling within Class 6. 52 With regard, finally, to the applicant’s arguments regarding the decision of the Second Board of Appeal of OHIM of 21 November 2006 concerning the sign JALLU, it need only be pointed out that the lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a previous practice of theirs (ARTHUR ET FELICIE, paragraph 25 above, at paragraph 71, and case-law cited). 53 The third plea in law cannot therefore be accepted. 54 It follows from all of the foregoing that the action must be dismissed. Costs 55 Under Article 87(2) of the Rules of Procedure, 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 should be ordered to pay the costs, as applied for by OHIM. On those grounds, THE COURT OF FIRST INSTANCE (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Rautaruukki Oyj to pay the costs. Martins Ribeiro Papasavvas Dittrich Delivered in open court in Luxembourg on 19 November 2008. [Signatures] * Language of the case: English.