JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
27 June 2013 (*)
(Community trade mark – Application for the Community word mark PURE POWER – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009)
In Case T‑248/11,
International Engine Intellectual Property Company, LLC, established in Warrenville, Illinois (United States of America), represented by C. Thomas and B. Reiter, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 15 February 2011 (Case R 2310/2010‑2), relating to an application for registration of the word sign PURE POWER as a Community trade mark,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen (Rapporteur), President, S. Soldevila Fragoso and G. Berardis, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 12 May 2011,
having regard to the response lodged at the Court Registry on 22 July 2011,
further to the hearing on 18 April 2013,
gives the following
Judgment
Background to the dispute
1        On 9 June 2010, the applicant, International Engine Intellectual Property Company, LLC, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark for which registration was sought is the word sign PURE POWER.
3        The goods in respect of which registration was sought are in Class 12 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: ‘Engines and engine parts for on-highway motor vehicles, including fuel system components, fuel injectors, exhaust gas recirculation valves, intake throttle valves, cast parts and air management systems, including turbo chargers.’
4        By letter of 5 July 2010, OHIM informed the applicant that the mark applied for was descriptive and that, on that ground as well as by reason of the promotional nature of the words concerned, it was devoid of distinctive character.
5        On 19 August 2010, in response to OHIM’s letter of 5 July 2010, the applicant claimed, in essence, first, that the mark applied for did not have the direct and obvious meaning that OHIM ascribed to it, with the result that the word combination ‘pure power’ was imaginative and uncommon, giving no more than a vague impression of the goods, second, that the internet did not show that that combination was used in the marketplace for the goods in question, and, third, that the sign was sufficiently vague to be distinctive.
6        By decision of 27 October 2010, the examiner, pursuant to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, refused registration of the mark applied for in respect of the goods referred to at paragraph 3 above.
7        On 23 November 2010, the applicant filed a notice of appeal with OHIM against the examiner’s decision.
8        By decision of 15 February 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It noted first that the relevant public by reference to which the mark applied for had to be examined was the ‘D.I.Y. car enthusiast’ and ‘professional English-speaking consumer’. It then went on to state that the word sign PURE POWER was immediately understood as meaning that the engines or engine parts produce ‘sheer energy for motion’ or ‘clean energy’. According to the Board of Appeal, those meanings are not necessarily contradictory in so far as the engines and engine parts may produce energy free from pollutants while enabling the vehicle to travel at high speeds. The Board of Appeal also held that, despite being a laudatory or promotional slogan, the word sign PURE POWER did not appear ‘to be sufficiently original or resonant to require at least some interpretation, thought or analysis on the part of the relevant public’ which ‘is led to associate that sign immediately with the goods at issue’. The Board of Appeal added that, given the meaning of the words ‘pure’ and ‘power’ which flows directly from the dictionary definitions, it was less necessary for the examiner to produce evidence that other commercial entities use the same expression in relation to the same goods. Finally, the Board of Appeal found that the sign PURE POWER was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 for the goods in Class 12 and that there was therefore no need to rule on the question whether the sign applied for was also descriptive of those goods.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
10      OHIM contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      The applicant relies on three pleas in law, alleging, first, breach of Article 7(1)(b) of Regulation No 207/2009, second, breach of Article 7(1)(c) of that regulation and, third, infringement of the ‘general principles of trademark law’.
The plea in law alleging breach of Article 7(1)(b) of Regulation No 207/2009
12      The applicant claims, in essence, that the expression ‘pure power’, which is not common in English, is a ‘fanciful phrase’ which requires imagination and thought on the part of the relevant public in order to identify the nature of the goods concerned, with the result that the mark must be regarded as sufficiently distinctive.
13      Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ cannot be registered.
14      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those 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 in question, thus enabling the consumer who has 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 (see, to that effect, Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II‑683, paragraph 37; judgment of 20 January 2009 in Case T‑424/07 Pioneer Hi-Bred International v OHIM (OPTIMUM), not published in the ECR, paragraph 20; and Case T‑471/07 Wella v OHIM (TAME IT) [2009] ECR II‑3377, paragraph 14).
15      For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question (Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 31, and TAME IT, paragraph 14 above, paragraph 16).
16      In addition, distinctive character must be assessed, first, in relation to the goods or services for which registration of the sign has been requested and, second, in relation to the perception which the relevant public has of it (Case T‑190/05 Sherwin-Williams v OHIM (TWIST & POUR) [2007] ECR II‑1911, paragraph 44).
17      In this respect, it must be stated that, with regard to the determination of the relevant public, which is not disputed in the present case, it is necessary to approve the finding of the Board of Appeal that, given the nature of the goods at issue, that public consists of D.I.Y. car enthusiast consumers and professionals. The distinctive character of the mark applied for must therefore be assessed by taking into account the perception of a specialised consumer. It is also necessary to approve the finding that the relevant public in relation to which the absolute ground for refusal must be assessed is an English-speaking public, since the word sign at issue consists of English words, a fact which is also not disputed by the applicant.
18      It is in taking all of those considerations into account that it is necessary to examine whether, as the applicant claims, the Board of Appeal erred in concluding that the mark applied for was devoid of distinctive character in relation to the goods referred to at paragraph 3 above.
19      It is apparent from the contested decision that, according to the Board of Appeal, the mark applied for is devoid of distinctive character given that, for the relevant public, the expression ‘pure power’ will immediately be understood as a reference to engines and engine parts which are capable of producing ‘sheer energy’ or ‘energy that is free from pollutants’, and not as an indication of the commercial origin of those goods.
20      It is therefore necessary to determine whether the association established by the Board of Appeal between the semantic content of the sign for which registration was sought, on the one hand, and the goods in question, on the other, is sufficiently concrete and direct to prove that that sign enables the relevant public to identify those goods immediately (see, to that effect, TWIST & POUR, paragraph 16 above, paragraph 48, and judgment of 7 April 2011 in Case T‑12/09 Gruber v OHIM (Run the globe), not published in the ECR, paragraph 18).
21      It must first be noted that, in the case of compound word signs, the relevant meaning, established on the basis of all the constituent elements of those signs and not only on the basis of one of them, must be taken into account (Case T‑28/06 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN) [2007] ECR II‑4413, paragraph 32). The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such a character (Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 41). That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (Case C‑238/06 P Develey v OHIM [2007] ECR I‑9375, paragraph 82, and judgment of 17 November 2009 in Case T‑473/08 Apollo Group v OHIM (THINKING AHEAD), not published in the ECR, paragraph 31).
22      It is apparent from the contested decision that, first, according to the New Shorter Oxford English Dictionary (1993 edition), the word ‘pure’ means ‘sheer’ or ‘not adulterated’ and the word ‘power’ means ‘energy’ or ‘a form of energy to produce motion, heat, or pressure’, with the result that the combination of the words ‘pure’ and ‘power’ denotes ‘sheer energy’ or ‘an unadulterated form of energy to produce motion’. From this the Board of Appeal deduced that, in relation to the goods at issue, the sign would immediately be understood as meaning that the engines or engine parts provide sheer energy for motion. Second, the Board of Appeal stated that, according to the abovementioned English dictionary, the word ‘pure’ was also defined as ‘free from what vitiates, weakens, or pollutes’, with the result that the expression ‘pure power’ could also mean ‘energy to produce motion that is free from what pollutes’. The Board of Appeal concluded from this that the examiner had acted correctly in finding that the relevant public would immediately and without further analytical effort understand the sign PURE POWER as a reference to ‘sheer energy for motion’ or to ‘motive energy that is free from pollutants’.
23      That analysis by the Board of Appeal must be endorsed. The mark applied for results from the juxtaposition of the word elements ‘pure’ and ‘power’, which are two common words in English. Considered as a whole, the word sign PURE POWER may therefore immediately be perceived by the relevant public as capable of meaning ‘sheer energy for motion’ or ‘energy that is free from pollutants’. The expression ‘pure power’ may even convey those two meanings simultaneously, as is apparent from paragraph 19 of the contested decision, in so far as engines or engine parts may produce an energy that is free from pollutants while enabling the vehicle nevertheless to travel at high speeds.
24      Accordingly, contrary to what the applicant claims, the combination of the terms ‘pure’ and ‘power’, which is not unusual in English, conveys a clear and unambiguous meaning and does not create a ‘play on words’ such as to confer, in the minds of the relevant public, a fanciful character on the sign applied for.
25      That conclusion cannot be invalidated by any of the arguments put forward by the applicant.
26      First, the applicant claims that the expression ‘pure power’ will not immediately be understood by the relevant public as meaning that the engines and engine parts provide sheer energy for motion or energy that is free from pollutants. Suffice it to note, however, that this is no more than an unsupported allegation. In its pleadings, moreover, the applicant fails to rebut the view that the expression ‘pure power’ may mean ‘sheer energy for motion’ or ‘energy that is free from pollutants’, as the Board of Appeal found at paragraph 19 of the contested decision.
27      Second, the applicant claims that the meanings given by the Board of Appeal to the expression ‘pure power’ require a detailed and profound analysis of that expression because ‘[i]t is not plausible that one person will understand directly [the word] “pure” in the sense of “maximum” and “environmentally friendly” at the same time, especially in view of the fact that these meanings have nothing in common.’
28      It must first be noted that this claim by the applicant is not based on any concrete information. Next, it should be pointed out that, in order for registration to be refused, it is sufficient if at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned (see, to that effect, regarding Article 7(1)(c) of Regulation No 207/2009, Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 32, and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 38). The applicant does not dispute that the expression ‘pure power’ may convey at least one of the two meanings stated by the Board of Appeal, namely ‘sheer energy’ (or, to use the applicant’s words, ‘maximum energy’) or ‘clean energy’ (or, to use the applicant’s words, ‘environmentally friendly energy’).
29      On the basis of the case-law cited at paragraph 28 above, it is also necessary to dismiss the applicant’s arguments that the word ‘power’ could also refer to a secondary product that may result from the operation of engines or to the energy necessary to operate an engine. As it has been established that the word ‘power’ may refer to the sheer energy produced by the goods at issue – a finding which the applicant has been unable to rebut –, that suffices for a finding that the sign applied for is devoid of distinctive character.
30      With regard to the argument that engine parts, which form part of the goods at issue, are incapable, as such, of producing energy, suffice it to note that they are nonetheless individual components of engines which, as such, can contribute to the production of energy. The applicant cannot therefore claim that the relevant public will not associate ‘sheer energy’ or ‘energy that is free from pollutants’ with engine parts.
31      Third, the applicant submits that the words ‘pure’ and ‘power’ are contrasting terms: ‘power’ is generally associated with predominance, force and toughness, whereas the word ‘pure’, which describes purity and cleanliness, refers to a more harmonic, idealistic and innocent view of the world, with the result that their combination cannot have an obvious meaning and, therefore, cannot provide information on the goods at issue.
32      OHIM submits that that argument, which was not raised before either the examiner or the Board of Appeal, is inadmissible. Without it being necessary to rule on the admissibility of the applicant’s abovementioned argument, it must be held that the applicant’s assertion is based on a personal and subjective approach, unsupported by objective evidence. In particular, the applicant has not succeeded in casting doubt on the Board of Appeal’s finding that the expression ‘pure power’ may simultaneously mean ‘sheer energy for motion’ and ‘energy that is free from pollutants’.
33      Fourth, as regards the argument that the expression ‘pure power’ does not appear in English-language dictionaries, suffice it to state that a distinctive character of a word sign should not be inferred from the fact that the word element of that sign does not appear in dictionaries as such (see, to that effect, Case T‑19/99 DKV v OHIM (COMPANYLINE) [2000] ECR II‑1, paragraph 26, and judgment of 12 June 2007 in Case T‑339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published in the ECR, paragraph 53). Therefore, that fact does not in any way modify the Board of Appeal’s finding that the mark applied for is devoid of distinctive character.
34      Fifth, the applicant claims that the expression ‘pure power’ is an alliteration generally used as a stylistic device in fiction and rhetoric, and that the relevant public will for that reason perceive the sign PURE POWER as a fanciful phrase. According to the applicant, the first letter of the words ‘pure’ and ‘power’ are identical, as is the letter ‘r’ at the end of those words, with the result that together they create an onomatopoeic ‘play on words’.
35      OHIM asserts that the applicant’s argument, which was, it claims, submitted for the first time in the action before the General Court, is inadmissible.
36      Even if that argument of the applicant were admissible, it is not capable of invalidating the Board of Appeal’s finding that the sign PURE POWER is devoid of distinctive character inasmuch as the relevant public will immediately associate the expression ‘pure power’ with the goods at issue. The alleged fancifulness resulting from the repetition of the letter ‘p’ at the beginning of the two word elements and that of the letter ‘r’ at the end, despite not being the final letter in the two word elements, does not outweigh the Board of Appeal’s finding that the relevant public will immediately associate the sign PURE POWER with the goods at issue.
37      Sixth, in the light of the considerations set out at paragraph 32 above, the argument that the sign PURE POWER can easily be remembered on the ground that it is an ‘alliteration which combines two contrasting terms’ must be rejected.
38      Seventh, with regard to the argument that there is no evidence that, in the marketplace concerned, the sign PURE POWER was used to designate the goods at issue, as an internet search shows, it must first be noted that, as OHIM claimed at the hearing, the applicant does not adduce any concrete evidence in support of its claim. In addition, it should be noted that the registration was not refused on the basis of Article 7(1)(d) of Regulation No 207/2009, relating to signs or indications which have become customary in current language or in bona fide trade practice. However, although proof of actual use of the sign for which registration is sought, by the relevant public or in advertising and marketing communications from competitors, is a relevant factor under Article 7(1)(d) of Regulation No 207/2009, it is not a relevant factor under Article 7(1)(b) of that regulation (see, to that effect, Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 41, and Run the globe, paragraph 20 above, paragraph 29).
39      In the light of all of the foregoing considerations, it must be held that the Board of Appeal was justified in concluding that, in so far as the relevant public was led to perceive the semantic content of the sign PURE POWER as providing information on the very nature of the goods at issue, in that engines and engine parts produce ‘sheer energy’ or ‘energy that is free from pollutants’, and not as indicating the commercial origin of those goods, that sign did not allow the goods at issue to be distinguished from those of other undertakings.
40      Consequently, the Board of Appeal acted correctly in law in concluding that the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
41      That finding cannot be called into question by the applicant’s argument that the reference, in the contested decision, to developments which bear no relation to the present case show that the Board of Appeal did not carry out a detailed examination of the applicant’s arguments but, on the contrary, applied a ‘standardised’ solution.
42      Even though, as OHIM itself acknowledges, paragraph 24 of the contested decision bears no relation to the present case, the applicant none the less cannot deduce from this that, in respect of the assessment of the distinctive character of the mark applied for, the Board of Appeal did not carry out a detailed examination of the present case. In addition, it must be stated that paragraph 24 of the contested decision, the content of which clearly bears no relation to the present case, could not have had any influence on the Board of Appeal’s finding regarding lack of distinctive character of the sign PURE POWER. In that regard, it is necessary to state that the applicant did not adduce any evidence, either in its pleadings or at the hearing, capable of showing that paragraph 24 of the contested decision could have influenced the Board of Appeal in its decision that the sign PURE POWER lacked distinctive character.
43      The plea in law alleging breach of Article 7(1)(b) of Regulation No 207/2009 must therefore be rejected.
The plea in law alleging breach of Article 7(1)(c) of Regulation No 207/2009
44      The applicant claims, in essence, that, by finding that the mark applied for was descriptive of the goods in respect of which registration was sought, the Board of Appeal breached Article 7(1)(c) of Regulation No 207/2009.
45      In the response, OHIM notes that a mistake occurred at paragraph 25 of the contested decision, which it confirmed at the hearing. It submits in this respect that there was no reasoning of the Board of Appeal to back the finding made at paragraph 25 of the contested decision that the mark applied for is descriptive and that that finding must therefore be ignored. OHIM states also that, since it must be held that the Board of Appeal did not decide whether the mark applied for is descriptive, the applicant’s argument seeking to prove that the sign is not descriptive is not relevant.
46      It must be held that, as OHIM acknowledges, the reference at paragraph 25 of the contested decision to the descriptive character of the sign applied for is a mistake. In this respect, as OHIM stated at the hearing, it is sufficient to point out that the contested decision contains no reasoning concerning a descriptive character of the mark applied for. Under the heading ‘Distinctiveness’ in the contested decision, the Board of Appeal refers several times to Article 7(1)(b) and to the related case-law, without referring at any point to Article 7(1)(c) on the descriptive character of a mark.
47      Consequently, it must be held that the Board of Appeal rejected the application for registration of the mark applied for solely on the ground of its lack of distinctive character.
48      The plea in law alleging breach of Article 7(1)(c) of Regulation No 207/2009 must therefore be rejected as being irrelevant.
The plea in law alleging infringement of the ‘general principles of trade mark law’
49      The applicant claims, in essence, that the refusal to register the mark applied for amounts to an infringement of the principle of equal treatment in that marks identical to the mark applied for have been registered at European Union level, in certain Member States and in the United States of America. The applicant adds that that difference in treatment did not, at any stage, form part of any of the reasoning during the proceedings before OHIM.
50      So far as concerns the applicant’s reference to earlier decisions of OHIM, it must be stated that, according to the case-law, OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. Although, with regard to the principles of equal treatment and of sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the application of those principles must, however, be consistent with the principle of legality. Moreover, for reasons of legal certainty and, precisely, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 to 77).
51      In the present case, as is apparent from paragraphs 13 to 43 above, registration of the mark applied for came up, in view of the goods in respect of which registration was sought and the perception of the relevant public, against the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009. As the applicant mentions, the word marks PURE POWER! and Pure Power have been registered at European Union level for goods different from those covered by the mark applied for. The applicant cannot therefore effectively rely on the earlier decisions of OHIM concerning the abovementioned word marks for the purpose of invalidating the Board of Appeal’s findings in the contested decision.
52      So far as registration of identical marks in Member States is concerned, it must be pointed out that the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it, which applies independently of any national system (see, to that effect, Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47, and judgment of 21 January 2009 in Case T‑399/06 giropay v OHIM (GIROPAY), not published in the ECR, paragraph 46). For that reason, neither OHIM nor, as the case may be, the European Union Courts are bound by decisions adopted in any Member State finding that the sign in issue can be registered as a national trade mark. Registrations already made in Member States are therefore a factor which may only be taken into consideration, but cannot be given decisive weight (see, to that effect, Case T‑127/02 Concept v OHIM (ECA) [2004] ECR II‑1113, paragraph 70). This is a fortiori the case with regard to identical marks registered in the United States of America.
53      Consequently, the applicant’s arguments based on the earlier, possibly contrary, practice of OHIM or national authorities cannot be accepted.
54      The present plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety.
Costs
55      Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. The first subparagraph of Article 87(3) of those Rules provides that, where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the Court may order that the costs be shared or that each party bear its own costs.
56      In the present case, although the applicant has been unsuccessful, the fact remains that the errors in the contested decision, acknowledged by OHIM, may have prompted the applicant to bring this action. The Court therefore considers it fair in the circumstances of the case to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Kanninen
Soldevila Fragoso
Berardis
Delivered in open court in Luxembourg on 27 June 2013.
[Signatures]
* Language of the case: English.