Judgment — ECLI:EU:T:2008:459
Date: 2008-10-23
Language of the case: English
Court formation: Seventh Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks
Procedure: Action for annulment - unfounded
Origin: Germany

JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber) 23 October 2008 (*) (Community trade mark – Invalidity proceedings – Community word mark PAST PERFECT – Rejection of the application for a declaration of invalidity – Article 7(1)(b), (c) and (d) of Regulation (EC) No 40/94 – Article 7(2)) In Case T‑133/06, TIM The International Music Company AG, TTV Tonträger-Vertrieb-2000 GmbH, established in Hamburg (Germany), represented initially by J. Wendt and G. Kukuk, and subsequently by J. Wendt, lawyers, applicants, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being Past Perfect Ltd, established in Bucknell, Oxfordshire (United Kingdom), represented initially by S. Disraeli, and subsequently by K. Tinkler, Solicitors, ACTION brought against the decision of the First Board of Appeal of OHIM of 3 February 2006 (Case R 150/2005-1), relating to invalidity proceedings between TIM The International Music Company AG and TTV Tonträger-Vertrieb-2000 GmbH, on the one hand, and Past Perfect Ltd, on the other, THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber), composed of N.J. Forwood, President, D. Šváby (Rapporteur) and E. Moavero Milanesi, Judges, Registrar: C. Kantza, Administrator, having regard to the application lodged at the Registry of the Court of First Instance on 12 May 2006, having regard to the response of OHIM lodged at the Registry on 6 October 2006, having regard to the response of the intervener lodged at the Registry of the Court on 27 September 2006, further to the hearing on 13 March 2008, at which none of the parties was present, gives the following Judgment Background to the dispute 1 On 22 November 2000, the intervener The Glass Gramophone Company Ltd, now Past Perfect Ltd, filed, 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, an application for registration of the Community word mark PAST PERFECT at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). 2 The goods for which registration of the mark was sought fall in Class 9 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: ‘musical recordings; musical recordings in the form of discs; musical recordings in the form of tapes; musical recordings in the form of electronic memory devices; audio and musical compact discs; audio and musical cassettes and tapes; audio and musical mini‑discs; audio and musical DVDs’. 3 The mark PAST PERFECT was registered on 28 January 2002 (‘the intervener’s mark’). 4 On 6 August and 22 December 2003, the applicants The International Music Company AG and TTV Tonträger-Vertrieb-2000 GmbH filed applications for a declaration of invalidity against the contested mark, claiming that registration of that mark was in breach of Article 7(1)(b) and (c) of Regulation No 40/94 and should be declared invalid pursuant to Article 51(1)(a) thereof. 5 By decision of 24 November 2004, the Cancellation Division of OHIM, after joining the invalidity requests referred to above, dismissed them. 6 On 20 January 2005, the applicants appealed against the decision of the Cancellation Division (Case R 150/2005-1). 7 By decision of 3 February 2006 (‘the contested decision’) the First Board of Appeal of OHIM dismissed the appeal as unfounded, holding in substance that the intervener’s mark was not descriptive of the goods concerned, that it had a highly distinctive character and that it was not to be annulled pursuant to Article 7(1)(d) of Regulation No 40/94 either. Forms of order sought by the parties 8 The applicants claim that the Court should: – annul the contested decision; – cancel the intervener’s mark; – order OHIM to pay the costs. 9 OHIM and the intervener contend that the Court should: – dismiss the application; – order the applicants to pay the costs. Law Arguments of the parties 10 In support of their application, the applicants put forward a single plea divided into three parts alleging, respectively, infringement of Article 7(1)(b), (c) and (d) of Regulation No 40/94, read in conjunction with Article 7(2) thereof. 11 As regards the first part, alleging infringement of Article 7(1)(b) of Regulation No 40/94, the applicants deny that the intervener’s mark has a distinctive character and claim that the Board of Appeal wrongly held that there was no need to keep the mark at issue free for use by other undertakings. 12 The applicants deny that the words ‘past perfect’ may denote a golden era or happy childhood, as the Board of Appeal suggests. 13 According to the applicants, a distinction must be drawn between distinguishability in general terms and actual distinctive character. The intervener’s mark does not have a distinctive character. 14 Furthermore, the applicants claim that the target public is in a position to classify the term ‘past perfect’ significantly better than the Board of Appeal wishes to believe, since a large number of EU citizens, and not only select language specialists, are acquainted with the grammatical rules of the English language. In addition, the ‘past perfect’ tense is also familiar in other languages, such as German, in which it is known as the pluperfect. 15 It is a grammatical term with which the public is extensively familiar, not least through school lessons. Since native speakers from Great Britain and Ireland also benefit from grammar instruction in their own language at school, they will associate that term with the corresponding tense. According to the applicants, the public will therefore construe the mark ‘PAST PERFECT’ as relating, in respect of the designated goods, to sound recordings from a completed past. Such sound recordings are, however, not produced solely by the intervener. Rather, there is a whole series of other sound recording carriers which involve such recordings. Therefore, the mark is not capable of identifying the goods as being those of the trademark proprietor and of distinguishing them from the goods of other undertakings. It therefore has no actual distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. 16 The applicants submit that it is sufficient, in accordance with Article 7(2) of Regulation No 40/94, for the ground of non-registrability to obtain in only part of the Community. The need to keep the designation of a tense free for use by others will always have to be upheld in the English-speaking countries of the United Kingdom and Ireland. 17 As regards the second part, alleging infringement of Article 7(1)(c) of Regulation No 40/94, since the target public is very familiar with the term ‘past perfect’ as the English language term for ‘completed past’, it will therefore assume that those words serve to describe the goods or the content of the sound recording carrier in greater detail. Accordingly, the applicants submit that the mark is not only incapable of distinguishing the intervener’s goods from those of other undertakings, but is also unrecognisable as a trade mark, since it is understood by the public as a product description. 18 As regards the third part, alleging infringement of Article 7(1)(d) of Regulation No 40/94, the applicants point out that the words ‘past perfect’, which consist of indications which have become customary in current language or in the bona fide and established practices of the trade, are a term of grammar which is taught at school and is therefore widespread. According to the applicants, there is no doubt that, at least in anglophone areas, the words ‘past perfect’ are in customary use. Therefore, such customary usage is in any event a ground for refusal of registration in the United Kingdom and, consequently, throughout the Community. 19 OHIM, supported by the intervener, challenges the applicants’ arguments. Findings of the Court 20 It must be pointed out, first of all, that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into consideration when examining each of those grounds for refusal may, or even must, reflect different considerations, according to the ground for refusal in question (see, judgment of 6 March 2007 in Case T‑230/00 Golf USA v OHIM (GOLF USA), not published in the ECR, paragraph 25 and the case-law cited). 21 However, there is a clear overlap between the scopes of the grounds for refusal set out in subparagraphs (b), (c) and (d) (see, by way of analogy, as regards the identical provisions of Article 3(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 67, and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 18). 22 In this case, it is appropriate to examine first of all the second part of the plea alleging infringement of Article 7(1)(c) of Regulation No 40/94. 23 Article 7(1)(c) of Regulation No 40/94 reflects the public interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (see, GOLF USA, paragraph 20 above, paragraph 26 and the case-law cited). 24 The descriptive 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, goods or services such as those in respect of which registration is sought. A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the target public (see, GOLF USA, paragraph 20 above, paragraph 27 and the case-law cited). 25 A word mark is regarded as designating the goods and services for which registration is sought where, in the eyes of the target public, there is a sufficiently direct and specific relationship between that mark and the goods and services for which registration is sought (see, GOLF USA, paragraph 20 above, paragraph 28 and the case-law cited). 26 In this case, the goods covered by the intervener’s mark are musical recordings in various forms and on various audio and musical sound carriers (paragraph 2 above) falling within Class 9 of the Nice Agreement. 27 The public in relation to which the absolute ground for refusal concerned is to be assessed is constituted, as the Board of Appeal stated in paragraph 16 of the contested decision, without being challenged by the applicants, of the general public in the Community. Nothing in the applicants’ pleadings can invalidate the Board of Appeal’s finding that that public must understand the meaning of the English words ‘past’ and ‘perfect’ taken individually or considered together as referring to the grammatical term ‘past perfect’. 28 It must be recalled that the average consumer is reasonably well informed and reasonably observant and circumspect (judgment of 12 June 2007 in Case T‑339/05 MacLean-Fogg v OHIM (LOCKTHREAD), not published in the ECR, paragraph 34) and that his level of attention is likely to vary according to the category of goods or services in question (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26, and Case T‑441/05 IVG Immobilien v OHIM (I) [2007] ECR II‑1937, paragraph 63). In this case, having regard to the goods concerned, which are everyday articles, the relevant public is made up of consumers of everyday articles who pay average attention when purchasing the goods. 29 In those circumstances, it must be determined, in the context of the application of the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 40/94 whether, for the relevant consumer, there is a direct and specific relationship between the word mark PAST PERFECT and the goods for which the intervener’s mark was registered. 30 As regards trade marks composed of words, such as the mark at issue, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark (Case C‑383/99 P Proctor & Gamble v OHIM [2001] ECR I‑6251, paragraph 40). In that connection, analysis of the words at issue in light of the appropriate lexical and grammatical rules is also relevant. 31 It must be held, first, that the sign at issue is composed of the English words ‘past’ and ‘perfect’ written separately. Second, it is common ground that the words ‘past perfect’, taken together, relate to a grammatical tense in the English language which designates the pluperfect. 32 First, as the Board of Appeal rightly observed, in paragraph 17 of the contested decision, consumers who do not understand those words as referring to a particular tense in English grammar will perceive ‘past perfect’ as being fanciful, first, on account of the fact that the usual order of the adjective and noun is inverted (perfect past) and, second, because its meaning is rather vague. 33 In the first place, those consumers will assume the intervener’s mark derives from a lexical invention, since its unusual structure creates an impression sufficiently removed from that produced by the simple combination of the information given by the elements of which it consists so that it is more than the sum of those elements. 34 In the second place, the Court agrees with the views expressed by the Board of Appeal in paragraph 18 of the contested decision, that consumers who do not understand the grammatical meaning of the intervener’s mark will not see it as a description of the goods concerned or of any one of their characteristics. 35 In that regard, it must be held that the meaning of the intervener’s mark for those consumers is too vague to be descriptive of the goods concerned, the time of production or, more specifically, the specific content of the musical recordings such as ‘classical music’ or ‘pre-19th Century music’. In other words, the mark at the very most evokes or alludes to a ‘golden’ era, but does not refer immediately to the music recorded or any other audio materials covered by the mark at issue such as audio books. 36 Furthermore, having regard to the vague nature of that expression, it does not appear that it may constitute the usual way of designating the goods concerned or one of their essential characteristics for the purpose of the case-law cited in paragraphs 24 and 30 above. Nor have the applicants shown that ‘past perfect’ or even ‘past perfect music’ constitutes or may constitute an impression of classical music or of non‑contemporary music or of other audio materials. 37 Therefore, the Board of Appeal rightly held that the intervener’s mark was not descriptive with respect to consumers who do not understand its grammatical sense. 38 In the second place, as regards consumers who understand the grammatical meaning, the applicants challenge the Board of Appeal’s findings, in paragraph 17 of the contested decision, that, first, neither the relevant consumers in the United Kingdom and Ireland nor those living in other Member States and who are familiar with English can be regarded as being familiar with English grammatical terminology and, second, the expression ‘past perfect’ will not be understood as referring to a particular tense of English grammar by persons other than those with a relatively high level of education or who have specialist knowledge. 39 In that connection, it must be held that, even assuming that the words ‘past perfect’ could be recognised by a substantial part of the target public as an English grammatical tense designating the pluperfect, it does not for that reason follow that the intervener’s mark would be understood by that public as being descriptive of the goods concerned. 40 The public will not consider the relationship between the mark and the goods concerned as being sufficiently direct and specific, within the meaning of the case-law cited in paragraph 25 above, the term ‘past perfect’ not immediately referring to recorded music or to any other goods covered, or to the time of production of the sound recordings protected, as the applicants claim. 41 Therefore, it must be held that, even for consumers who understand the grammatical meaning of the expression ‘past perfect’, the intervener’s mark will be understood as fanciful and not as descriptive of the goods covered or their characteristics. 42 It should be added that the general need to keep the ‘past perfect’ free for use by others, put forward by the applicants in their application, has no bearing on the goods concerned in this case and is, therefore, irrelevant in the assessment of an alleged infringement of Article 7(1)(c) of Regulation No 40/94. 43 In light of the foregoing the second part of the plea must be dismissed. 44 As regards the first part, it must be held that signs falling within Article 7(1)(b) of Regulation No 40/94 are deemed not to be capable of exercising the essential function of a trade mark, which is to identify the commercial origin of the goods or services, thus enabling the consumer who acquired them 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 purchase (Case T‑128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, paragraph 31). 45 In this case, the Board of Appeal held, in paragraph 19 of the contested decision, that the arguments put forward by the applicants in support of their claims regarding the alleged infringement of Article 7(1)(b) of Regulation No 40/94 were ‘essentially the same as those advanced to support the plea based on [Article 7(1)(c)] which [was] irrelevant’. In paragraph 18 of the contested decision, in relation to the supposedly descriptive character of the intervener’s mark, the Board of Appeal stated that the mark ‘[was] a wholly fanciful expression to designate the goods concerned and had a highly distinctive character’. 46 In that connection, it must be held that, in order to show that the intervener’s mark is devoid of any distinctive character, the applicants’ assertions raised with respect to the first part and those submitted with respect to the second part overlap to a large extent (see paragraphs 11 to 17 above). 47 As regards the first part, account must be taken of the public interest which Article 7(1)(b) is specifically intended to protect, namely, to guarantee the identity of the origin of the product or the service designated by the mark. 48 In that connection, it must be observed that the mark at issue is fanciful with respect to the goods for which it was registered, as is clear from paragraph 41 above. It must be held that, having regard to its unusual character, it has a meaning of its own distinguishing, in the mind of the relevant public, the intervener’s goods from those with another commercial origin. Therefore, contrary to the applicants’ assertions, the Board of Appeal did indeed take account of the mark’s actual distinctive character. 49 Finally, it must be observed that none of the arguments put forward with respect to that part can invalidate the reasoning of the Board of Appeal in paragraph 18 of the contested decision, since it does not lack clarity and precision. 50 In the light of the foregoing the first part must also be dismissed as unfounded. 51 As regards the third part, it must be observed that Article 7(1)(d) of Regulation No 40/94 must be interpreted as meaning that it precludes registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought. Thus, whether a mark is customary can be assessed only, firstly, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, on the basis of the target public’s perception of the mark (see, Case T‑322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II‑835, paragraph 49 and the case‑law cited). 52 Although there is a clear overlap of the scopes of Article 7(1)(c) and Article 7(1)(d) of Regulation No 40/94, the marks referred to in the latter provision are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered (see, WEISSE SEITEN, paragraph 51 above, paragraph 51 and the case-law cited). 53 In this case, the Board of Appeal finally dismissed the arguments put forward in support of that part of the plea on the ground that they were identical to those already submitted with respect to the other provisions of Article 7 of Regulation No 40/94, which it held to be irrelevant. 54 It should be observed that, under the third part of the plea, the applicants essentially confine themselves to claiming that the expression ‘past perfect’ has become customary in current language or in the bona fide and established practices of the trade, without however adducing any evidence that it has become customary in order to designate the goods concerned. 55 It must be held, in accordance with the case-law cited in paragraphs 51 and 52 above, that the decisive factor for the purposes of Article 7(1)(d) of Regulation No 40/94 is precisely that the signs or indications of which the mark is exclusively composed have become customary in current language or in the bona fide and established practices of the trade to designate ‘the goods or services in respect of which registration of that mark is sought’. 56 Since that has not been established with respect to the mark concerned, the third part of the plea must also be dismissed. 57 Furthermore, given that, in paragraph 17 of the contested decision, the Board of Appeal assessed the mark in question with regard to, first, the target public in the United Kingdom and Ireland and, second, with respect to nationals of other Member States who are familiar with English, the applicants’ arguments relating to the alleged infringement of Article 7(2) of Regulation No 40/94 must be dismissed as unfounded. 58 In the light of the foregoing, the application must be dismissed in its entirety. Costs 59 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 forms of order sought by OHIM and the intervener. On those grounds, THE COURT OF FIRST INSTANCE (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders TIM The International Music Company AG and TTV Tonträger-Vertrieb-2000 GmbH to pay the costs. Forwood Sváby Moavero Milanesi Delivered in open court in Luxembourg on 23 October 2008. E. Coulon N.J. Forwood Registrar President * Language of the case: English.