JUDGMENT OF THE GENERAL COURT (Third Chamber)
27 November 2018 (*)
(EU trade mark — International registration designating the European Union — Figurative mark H 2 O+ — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑824/17,
H2O Plus LLC, established in San Francisco, California (United States), represented by R. Niebel and F. Kerl, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by S. Palmero Cabezas and D. Walicka, then by S. Palmero Cabezas and H.J. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 6 October 2017 (Case R 499/2017-1), relating to the international registration designating the European Union in respect of the figurative mark H 2 O+,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 December 2017,
having regard to the response lodged at the Court Registry on 14 March 2018,
further to the hearing on 4 October 2018,
gives the following
Judgment
Background to the dispute
1        On 13 October 2016, the applicant, H2O Plus LLC, filed with the European Union Intellectual Property Office (EUIPO) an application for protection in the European Union of international registration No 1313244, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The international registration in respect of which protection was sought is the following figurative sign:
3        The goods in respect of which protection was applied for are in Classes 3 and 5 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, for each of those classes, to the following description:
–        Class 3: ‘Non-medicated skin care preparations; cosmetic preparations for skin care; cosmetic preparations for body care; skin care products, namely non-medicated skin serum, beauty serums, non-medicated anti-aging serum, cosmetic creams, face and body creams, eye creams, anti-wrinkle creams, anti-aging creams, night creams, age spot reducing creams; sunscreen creams, nail cream, face and body lotions, skin lotions, body lotions with SPF, gels for cosmetic purposes, beauty gels and shower and bath gel; eye lotions; eye gels; facial masks; facial washes; facial creams; facial cleansers; facial moisturisers; skin moisturisers; skin masks; cosmetic masks; beauty masks; gel eye masks; toning lotion for the face, body and hands; anti-aging toner; skin toners; soap; anti-aging cleanser; skin cleansers, wipes impregnated with a skin cleanser; skin cleansing gels; skin care preparations, namely skin peels; cosmetic preparations, namely, firming creams, firming lotions, facial moisturiser with SPF, face powder, non-medicated exfoliating preparations for use on the face, skin, body, hands and feet; lip cream; lip balm; non-medicated lip care preparations; lip balm with SPF; make-up remover; cloths or tissues impregnated with a skin cleanser; cosmetic body scrubs for the face, skin, body, hands and feet; beauty creams for body care; body and beauty care cosmetics; body wash; skin care preparations, namely, body balm, skin and body topical lotions, creams and oils for cosmetic use; body butter, body oil, hair care preparations, hair shampoos and conditioners; hand cream; non-medicated foot cream and foot scrubs; lipstick; after-shave balms; shaving soaps; shaving preparations, pre-shave creams, pre-shave oils; non-medicated bath salts, non-medicated bath preparations; skin refreshers; antiperspirants; personal deodorants; deodorants for body care; cosmetic pads; pre-moistened cosmetic towelettes; body masks; body washes; cosmetic preparations for eye care; lip glosses; nail care preparations; non-medicated acne treatment lotions; non-medicated acne treatment preparations;’
–        Class 5: ‘Medicated sunscreen, namely, lotions containing sunscreen; acne treatment preparations, namely, cleansing pads, lotions, creams, and cleansers’.
4        On 3 November 2016, the examiner notified the applicant of the provisional refusal of protection of the sign covered by the international registration on the basis of Article 7(1)(b) and (c) and of Article 7(2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001).
5        On 18 January 2017, the applicant submitted its observations on the provisional refusal of protection of the sign covered by the international registration.
6        By decision of 20 January 2017, the examiner refused protection of the sign covered by the international registration in respect of all the goods referred to in paragraph 3 above, pursuant to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, confirming the reasons set out in its provisional refusal of protection.
7        On 13 March 2017, the applicant filed an appeal against the examiner’s decision under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
8        By decision of 6 October 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal holding that in relation to the goods concerned, namely cosmetic goods and medicated sunscreens, the sign at issue was devoid of distinctive character for the relevant public, composed in the present case, as regards goods for everyday use, of the average consumers of those goods in the European Union, who are reasonably well informed, reasonably observant and circumspect, and whose level of attention is average.
9        In that regard, the Board of Appeal found that such consumers effortlessly perceive the sign in question as the chemical formula for water together with the mathematical sign ‘+’, which is understood as a ‘plus’ and likely, in particular, to refer to the particularly high quality of the goods concerned. In those circumstances, the sign at issue, composed of elements which are ‘banal and commonplace’ in the light of the goods in question, is spontaneously associated by the relevant public with some features of those goods. Consequently, such a sign is not perceived as a mark likely to indicate the commercial origin of those goods.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant relies, in essence, on two pleas in law, the first alleging infringement of Article 7(1)(b) of Regulation 2017/1001, and the second alleging infringement of Article 7(1)(c) of that regulation.
The first plea, alleging infringement of Article 7(1)(b) of Regulation 2017/2001
13      The applicant submits, in essence, that the Board of Appeal erred in its assessment in taking the view that the sign in question was devoid of distinctive character. It claims, in essence, that the sign at issue cannot be perceived by the relevant public as a commonplace combination of universal symbols, namely the chemical formula for water and the mathematical symbol ‘+’, but as a ‘creative combination’ of characters, numbers and a mathematical symbol, consisting in the creative and fanciful overlap of the character ‘o’ of the chemical formula of water with the Venus symbol tilted on its side, which confers, for that reason, distinctive character on the sign at issue.
14      EUIPO disputes the applicant’s arguments.
15      Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character are not to be registered.
16      For a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (judgments of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42, and of 15 May 2014, Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 50).
17      The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception the relevant public may have of it, which consists of average consumers of those goods or services who are reasonably well informed and reasonably observant and circumspect (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25, and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43).
18      In the present case, it should be observed, in the first place, that the goods in respect of which protection was sought, in essence, cosmetic products, medicated sunscreens and acne treatment preparations, namely cleansing pads, lotions and cleansers, are everyday consumer goods, the purchase of which does not require any further thought.
19      Under those circumstances, the Board of Appeal rightly took the view that the relevant public was composed of consumers of such goods in the European Union, who are reasonably well informed, reasonably observant and circumspect, and whose level of attention is average, which, moreover, is not challenged by the applicant.
20      In the second place, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that he will, before anything else, break it down into elements which, for him, suggest a concrete meaning (see, in respect to a word mark, judgments of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57, and of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑548/12, EU:T:2015:478, paragraph 37).
21      Under those circumstances, the Board of Appeal rightly found that the relevant public would effortlessly perceive the sign at issue as consisting of the chemical formula for water (H2O) and the mathematical sign ‘+’, two universally known, ‘banal and commonplace’ symbols, thus easily identifiable and, therefore, almost neutral as regards the distinctive character of such a sign.
22      In that regard, the fact that the number ‘2’ does not appear in subscript cannot suffice to prevent the element ‘h2o’, in the mind of the relevant public, from referring to the symbol for water as, whether the number appears in subscript or not, it is read in the same way. In addition, it is common ground, as the Board of Appeal has pointed out, that the chemical formula for water is often written in everyday communications with the number ‘2’ in ordinary script and not invariably in subscript.
23      In those circumstances, the overall impression produced by the sign at issue will be dominated by the element ‘h2o’.
24      Nor can the fact that the ending of the sign could be perceived as the Venus symbol tilted on its side call into question such a finding.
25      Such an interpretation requires a special imaginative effort, since the Venus sign (♀) is not read horizontally. Such an imaginative effort is, on the other hand, not necessary where the contested sign, which is commonly read from left to right, is understood as consisting of the chemical formula for water and the mathematical symbol for addition. Even though the Venus sign is widely known and commonly used in astrology, astronomy and in some contexts of everyday life, the fact remains that, in the present case, that sign, reproduced horizontally and therefore displayed in a form which is unusual or even unknown by the relevant public, cannot primarily be perceived by the consumer as such, particularly when that symbol is part of the universally known formula of water, namely H2O.
26      Thus, contrary to the applicant’s submission, the graphic combination of the elements ‘o’ and ‘+’ cannot confer any distinctive character on the sign at issue when such a combination is, as the Board of Appeal rightly stated in paragraph 36 of the contested decision, hardly noticeable since it is merely represented by a very small white square resulting from the intersection between the elements ‘o’ and ‘+’ in the bold black line of the first of those two elements (see paragraph 2 above).
27      Such a graphic combination will draw the consumer’s attention even less so given that he must rely on an admittedly imperfect recollection of the sign at issue, which is dominated by its other elements, namely the capital letters ‘H’ and ‘O’, the number ‘2’ and the mathematical sign ‘+’, all of which are larger than that combination and depicted in bold in a black typeface.
28      Ultimately, it is not established, and it moreover seems unlikely to be the case, that an average consumer may read, immediately and without further thought, the element ‘h2o +’ not as meaning ‘water plus’, but, as the applicant seeks to establish, a sign consisting of two separate and distinct elements, each without meaning, namely, first, ‘h2’ and, second, the Venus sign in a horizontal position.
29      In the third place, although, as the applicant claims, hydration is not of ‘key importance’ in respect of all the goods in question, the fact remains that, as pointed out by EUIPO, such goods that are intended to protect the skin have, directly or indirectly, a moisturising effect, including age spot reducing creams, sunscreen creams, non-medicated exfoliating preparations for use on skin, acne treatment preparations and make-up remover.
30      Therefore, and in so far as the sign ‘+’ alludes to a positive or additional element, the Board of Appeal did not err in its assessment by finding that, having regard to the goods at issue, the sign is perceived by the relevant public as referring to a certain quality or characteristic of such goods in that they provide better or extra hydration.
31      In that regard, the fact that some of the goods in question do not consist primarily of water cannot suffice to conclude that the relevant public will not perceive the sign at issue as an indication of such a characteristic. That is so since, as regards powders, oils or balms and lipsticks, they themselves have, as the Board of Appeal rightly points out, equally moisturising properties. In particular, as regards wipes and pads, namely goods on which the applicant also relies, they are generally impregnated with skin cleansing materials or associated with such materials with the result that the sign at issue, assessed in the light of such components, will, in the eyes of the relevant public, refer to the characteristics of those goods, all linked to the world of skin care and beauty, of which hydration is an essential element.
32      Thus, the fact that the contested sign is not descriptive for all of the goods at issue cannot be sufficient to render it, on that sole ground, distinctive and prevent such a sign from being perceived by the relevant public, in the present case, as providing information on the nature of those goods (see, to that effect, judgment of 12 July 2012, medi v OHIM (medi), T‑470/09, not published, EU:T:2012:369, paragraphs 32 to 36).
33      In those circumstances, and contrary to what the applicant submits, the sign at issue cannot, in the absence of distinctive character, enable the relevant public to identify the commercial origin of the goods covered by the application for protection.
34      Therefore, the Board of Appeal was entitled to find that the sign at issue, consisting of commonplace elements without any particular stylisation or graphics, which does not differ from those generally used in trade, was devoid of distinctive character, because it refers simply and in essence, in the mind of the relevant public, to a positive or appealing quality and function of the goods at issue.
35      In the fourth and last place, in accordance with settled case-law, the applicant cannot reasonably rely on EUIPO’s previous practice to challenge the legality of the contested decision, including as regards decisions concerning earlier marks of which the applicant itself is the proprietor, since the legality of decisions of the Boards of Appeal is assessed purely by reference to Regulation 2017/1001 (judgments of 16 February 2000, Procter & Gamble v OHIM (Soap bar shape), T‑122/99, EU:T:2000:39, paragraphs 60 and 61, and of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 35).
36      Even though, in the light of the principles of equal treatment and sound administration, EUIPO must take into account decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not, it cannot, however, be bound by its earlier decisions, since each case must be treated according to its own special features. In any event and in accordance with the principle of legality, the applicant cannot rely on a decision-making practice of EUIPO which would have been contrary to the European Union trade mark regulation (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited, and of 17 April 2018, Bielawski v EUIPO (HOUSE OF CARS), T‑364/17, not published, EU:T:2018:193, paragraphs 42 to 46 and the case-law cited).
37      In the present case, as is apparent from paragraphs 15 to 34 above, the Board of Appeal rightly found that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001, with the result that the applicant cannot successfully rely on EUIPO’s previous decisions in order to invalidate that conclusion.
38      In the light of all the foregoing, the first plea must be rejected.
The second plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
39      The applicant claims that the Board of Appeal erred in applying Article 7(1)(c) of Regulation 2017/1001.
40      However, it should be noted that the Board of Appeal did not apply such an absolute ground for refusal, since it rightly took the view, in paragraph 51 of the contested decision, that since one absolute ground for refusal sufficed for the sign not to be registered, in this case the ground for refusal based on its lack of distinctive character, it was not necessary to consider whether the sign at issue should also be refused registration pursuant to Article 7(1)(c) of Regulation 2017/1001. The second plea must therefore be rejected as ineffective, since it is alleging infringement of a provision which was not applied by the Board of Appeal in the contested decision.
41      In the light of all the foregoing, the action must be dismissed in its entirety.
Costs
42      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
43      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby:
1.      Dismisses the action;
2.      Orders H2O Plus LLC to pay the costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 27 November 2018.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.