Judgment — ECLI:EU:T:2008:15
Date: 2008-01-24
Language of the case: English
Court formation: Fifth 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;Action for annulment - inadmissible

summary form (see Case T‑209/01 Honeywell v Commission [2005] ECR II-5527, paragraph 56, and the case-law cited). 24 Whilst the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential submissions in law, which must appear in the application (order of the Court of First Instance in Case T-154/98 Asia Motor France and Others v Commission [1999] ECR II-1703, paragraph 49, and Honeywell v Commission, paragraph 23 above, paragraph 57). 25 Moreover, it is not for the Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, since the annexes have a purely evidential and instrumental function (see Honeywell v Commission, paragraph 23 above, paragraph 57, and the case-law cited). 26 In the present case, the applicant refers generally, in its application, to the arguments put forward in its pleadings before OHIM, which it annexed to its application and which also appear in the file relating to the proceedings before the Board of Appeal, forwarded to the Court pursuant to Article 133(3) of the Rules of Procedure of the Court of First Instance. In accordance with the abovementioned case-law, the Court is not required to find in those pleadings the arguments to which the applicant might be referring or to examine them, since those arguments are inadmissible (see, to that effect, Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraph 21). Substance 27 Under Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Furthermore, Article 7(2) of Regulation No 40/94 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’. 28 According to the case-law, the signs referred to in Article 7(1)(b) of Regulation No 40/94 are signs 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, 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 acquisition (Case T-79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II-705, paragraph 26, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 37). That is true, in particular, for signs which are commonly used in the marketing of the goods or services concerned (Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 65). 29 Registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (LIVE RICHLY, paragraph 28 above, paragraph 66; see also, by analogy, Case C-517/99 Merz & Krell [2001] ECR I-6959, paragraph 40). 30 A sign which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is only distinctive, for the purposes of Article 7(1)(b) of Regulation No 40/94, however, if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (Case T-130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II-5179, paragraph 20; Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235, paragraph 21; Case T-216/02 Fieldturf v OHIM (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS) [2004] ECR II‑1023, paragraph 25; and LIVE RICHLY, paragraph 28 above, paragraph 66). 31 Furthermore, the distinctiveness of a mark must be assessed, first, in relation to the goods or services for which registration has been requested and, second, in relation to the perception which the relevant public has of it (LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS, paragraph 30 above, paragraph 26, and LIVE RICHLY, paragraph 28 above, paragraph 67). 32 In the present case, it must be pointed out, as the Board of Appeal did, that the goods covered by the mark applied for are aimed at children or, at the very least, tend to be used by them. Therefore, the relevant public consists of the parents, family, or friends of children, who will buy those goods for the use of children. In other words, it is the general public, namely average consumers, who, according to the case-law (see LIVE RICHLY, paragraph 28 above, paragraph 69, and the case-law cited), are deemed to be reasonably well-informed and reasonably observant and circumspect. 33 Furthermore, in view of the fact that ‘safety’ and ‘first’ or ‘1st’ are English words, the Board of Appeal was right to decide to take account of the perception which the average English-speaking consumer will have of the mark applied for. If it is established that the mark applied for is not perceived, by such a consumer, as an indication of the commercial origin of the goods in question, that is sufficient for registration of the mark applied for to be refused. 34 It must also be pointed out that the Board of Appeal was right, in the contested decision, to approve the examiner’s finding, substantiated by the reference to a dictionary, that the expression ‘safety first’ is well-known and frequently used in English to indicate that safety is a priority. The applicant does not dispute that meaning of the expression in question. 35 Considerations related to safety are particularly relevant in respect of goods intended for use for or by children, given the increased risk of accidents and injuries to which they are exposed. Consequently, having regard to the abovementioned meaning of the expression ‘safety first’ in English, it must be considered that the average English-speaking consumer will perceive that expression, where it is used to designate the goods covered by the mark applied for, as information relating to a quality or characteristic of the goods, which indicates that safety considerations played a dominant role in the design and manufacture of those goods and, therefore, as an advertising slogan. That consumer will accordingly not automatically perceive the expression as an indication of the commercial origin of the goods in question. It follows that, in respect of those goods, the expression is, for the relevant English-speaking public, devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94. 36 The applicant’s arguments do not call into question that finding concerning the sign SAFETY FIRST, but it seeks to make a distinction in the case of the mark applied for on the ground that, instead of ‘first’, it has the element ‘1st’, which, as it consists of the combination of a number and two letters, is claimed to have an intrinsic distinctive character. 37 In that regard, it is necessary to bear in mind, first, the case-law according to which any distinctive character of a compound mark may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public. It is not inconsistent with a successive examination of the different composite elements of the mark in question to consider that mark as a whole (see Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraphs 29 and 31, and the case-law cited). 38 Secondly, it must be pointed out that in English ‘1st’ is not an arbitrary juxtaposition of a number and two letters, but is another way of writing the ordinal number ‘first’, which is well-known and commonly used in English. It is true that ‘1st’ is used more at the beginning of numbered lists or headings, while in sentences it is more common to write ‘first’. The fact remains that average English-speaking consumers who are confronted with ‘1st’ in a phrase will immediately and without the need for any particular intellectual effort read it as ‘first’, even if they take the view that such use is unusual. Consequently, contrary to the applicant’s claim, such consumers will not have to carry out any particular analysis in order to read the mark applied for in that way. 39 Therefore, such consumers will immediately perceive the mark applied for, taken as a whole, in the same way as ‘safety first’, namely as an indication relating to the characteristics of the goods concerned, or indeed as an advertising slogan, and not as an indication of the commercial origin of those goods. 40 Advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier. Therefore, the use, in the mark applied for, of ‘1st’ instead of ‘first’, far from precluding any possibility of that sign’s being perceived as an advertising slogan, makes such a perception more likely. 41 The applicant’s argument that the public will perceive the sign SAFETY 1ST as a fanciful address or street name rather than as the expression ‘safety first’ must also be rejected. 42 In English, postal addresses contain numbers (1, 2, 3, etc.) and not ordinal numbers (1st, 2nd, 3rd, etc.). Moreover, the numbers are placed at the beginning of the address, before the street name concerned, and not at the end. Thus, an address in an imaginary street called ‘Safety’ would be written ‘1 Safety’ and not ‘Safety 1st’. Therefore, contrary to the applicant’s submission, the relevant English-speaking public, confronted with the mark applied for, will not think of an address. 43 Likewise, the mark applied for will not be perceived by that public as a street name, whether imaginary or not. It is true that in some English-speaking countries, in particular the United States of America, it is not uncommon to designate streets by ordinal numbers rather than by names (for example ‘5th Avenue’). Nevertheless, in that case, the ordinal number is at the beginning rather than at the end and, what is more, it is followed by a word such as ‘street’, ‘road’ or ‘avenue’ and not by a word such as ‘safety’, which has no connection with a ‘street’. 44 It follows, as the Board of Appeal correctly found, that the relevant English-speaking public’s overall perception of the mark applied for will not be as an indication of the commercial origin of the goods which that mark covers; therefore, for the public in question, that mark is devoid of any distinctive character in respect of those goods. The plea in law alleging infringement of Article 7(1)(b) of Regulation No 40/94 must therefore be rejected. 45 Lastly, as regards the applicant’s argument to the effect that the sign in question has been registered as a trade mark in the United States of America, that argument must be rejected as irrelevant as that registration was effected on the basis of different legislation. It suffices to point out, in that regard, that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone (Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 70; and Case T-15/05 De Waele v OHIM (Shape of a sausage) [2006] ECR II‑1511, paragraph 44). 46 It follows from all of the above that the present action is unfounded and must be dismissed. Costs 47 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 must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM. On those grounds, THE COURT OF FIRST INSTANCE (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders Dorel Juvenile Group, Inc. to pay the costs. Vilaras Martins Ribeiro Jürimäe Delivered in open court in Luxembourg on 24 January 2008. E. Coulon M. Vilaras Registrar President * Language of the case: English.