JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
3 December 2015 (*)
(Community trade mark — Application for the Community figurative mark DUALSAW — Absolute grounds for refusal — Partial refusal of registration — Descriptive character — Lack of distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑647/14,
Infusion Brands, Inc., established in Myerlake Circle Clearwater, Florida (United States), represented by K. Piepenbrink, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by V. Melgar, then by H. O’Neill and M. Rajh, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 1 July 2014 (Case R 397/2014-4), concerning an application for registration of the figurative sign DUALSAW as a Community trade mark,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Court Registry on 2 September 2014,
having regard to the response lodged at the Court Registry on 6 November 2014,
having regard to the decision of 5 December 2014 refusing leave to lodge a reply,
further to the hearing on 3 September 2015,
gives the following
Judgment
Background to the dispute
1        On 31 July 2013, the applicant, Infusion Brands, Inc., filed an application for registration of a Community trade mark with 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        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 7, 8 and 35 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, as regards those classes relevant to the present case, to the following description:
–        Class 7: ‘Agricultural implements other than hand-operated; machines and machine tools; power tools, power saws, power reciprocating saws, power hole saws, power multitools, circular saws, saw blades, circular saw blades, power drills, power driven screw drivers, power sanders, power grinders, and parts of the aforementioned goods’;
–        Class 8: ‘Hand tools and implements (hand-operated) and parts of the aforementioned goods’;
–        Class 35: ‘Wholesaling and retailing, including via the Internet, concerning the goods: agricultural implements other than hand-operated, machines and machine tools, power tools, power multitools, saws, blades, drills, screw drivers, sanders, grinders, hand tools and implements (hand-operated), and parts of the aforementioned goods.’
4        By decision of 5 December 2013, the Examiner rejected the applicant’s application on the basis of Article 7(1)(b) and (c) and 7(2) of Regulation No 207/2009 in respect of the goods and services listed in paragraph 3 above, on the ground that the mark applied for was descriptive and devoid of distinctiveness. Registration was authorised in respect of certain other goods and services covered by the application and included in Classes 7 and 35.
5        On 3 February 2014, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Examiner’s decision.
6        By decision of 1 July 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal.
7        In support of its decision, with regard to the absolute ground referred to in Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal considered, in essence, that the public targeted consisted of professionals, in particular from the handicraft, industrial and building sectors, and consumers forming part of the general public, with an above average level of attention when purchasing the goods in question. Furthermore, the Board of Appeal took the view that, given that the words ‘dual’ and ‘saw’ were part of the English language, the English-speaking public in the EU must be taken into consideration.
8        On that basis, the Board of Appeal considered that the word element ‘dualsaw’ of the sign applied for was a common and clear statement designating a ‘double or dual saw’. According to the Board of Appeal, when the relevant public is faced with the term ‘dualsaw’ in the context of the goods and services covered, it will immediately understand it as a reference to a possible characteristic of the services and goods in question, which may consist of two saws, function as efficiently as two saws, or be used for devices with using two saws. Despite its figurative elements and colours, the mark is not fanciful or arbitrary.
9        The Board of Appeal also considered that, given that the sign in respect of which registration was sought was descriptive of the characteristics of all the goods and services which it covered, it was, accordingly, devoid of distinctiveness in respect of those goods and services, within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
11      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      In support of its action the applicant relies on two pleas in law, alleging infringement of Article 7(1)(c) and (b) of Regulation No 207/2009, respectively.
13      As regards the first plea in law, the applicant, in essence, criticises the Board of Appeal for incorrectly concluding that the figurative sign DUALSAW was descriptive so far as concerns the goods and services covered by the application for registration.
14      OHIM disputes those arguments.
15      Under Article 7(1)(c) of Regulation No 207/2009, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered.
16      According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraphs 29 and 31; 12 June 2007 in MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, EU:T:2007:172, paragraph 27, and 10 February 2010 in O2 (Germany) v OHIM (Homezone), T‑344/07, ECR, EU:T:2010:35, paragraph 20).
17       Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, 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 order thereby to enable the consumer who acquired the goods or service designated by the mark 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 (judgments in OHIM v Wrigley, cited in paragraph 16 above, EU:C:2003:579, paragraph 30, and LOKTHREAD, cited in paragraph 16 above, EU:T:2007:172, paragraph 28).
18      Consequently, for a sign to fall within the scope of the prohibition in that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgment in LOKTHREAD, cited in paragraph 16 above, EU:T:2007:172, paragraph 29 and the case-law cited). In that regard, it must be stated that the fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 50 and the case-law cited).
19      Finally, it should be noted that the descriptiveness of a sign may be assessed only, first, in relation to the relevant public’s understanding of that sign and, secondly, in relation to the goods or services in question (see judgment in LOKTHREAD, cited in paragraph 16 above, EU:T:2007:172, paragraph 32 and the case-law cited).
20      As regards the relevant public, it should be noted that, as stated correctly in paragraph 10 of the contested decision and not disputed by the applicant, the goods and services covered by the mark applied for are intended not only for professionals, in particular those from the handicraft, industrial and building sectors, but also for consumers belonging to the general public and their level of attention when purchasing the goods in question will be above average.
21      Furthermore, as the Board of Appeal noted, the sign at issue is made up of English words. Consequently, under Article 7(2) of Regulation No 207/2009, the relevant public, by reference to which the absolute ground for refusal must be assessed, is the English-speaking public of the European Union (see judgment of 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 19 and the case-law cited).
22      In addition, the meaning of each of the words comprising the mark applied for is clear. Accordingly, the word ‘dual’ means ‘relating to or denoting two’ or ‘double’ and the word ‘saw’ refers inter alia to any of various hand tools for cutting, for example, wood or metal and having a blade with teeth along one edge. As the Board of Appeal noted, those words must be regarded as common words belonging to everyday language which may be understood by every English speaker. Consequently, the mark as a whole means, as the Board of Appeal correctly noted in paragraph 11 of the contested decision, ‘a saw having a twofold or double character or nature’.
23      The goods in Class 7 which are relevant in the present case comprise tools or instruments which may include two saws and be intended for specific applications or more efficient use. In the same way, the goods in Class 8 are hand tools and instruments which may also be used in the abovementioned two ways. Finally, the services in class 35, are associated with the wholesaling and retailing of those goods. When faced with the expression ‘dualsaw’ in the context of the goods and services in question, the relevant public will immediately perceive it as a reference to a possible characteristic of the services and goods in question, which may consist of two saws, operate as efficiently as two saws, or be used for devices with two saws.
24      As regards the figurative elements and colours of the mark applied for, the Board of Appeal took the view that they were in no way fanciful or arbitrary. The overall message of the element ‘dualsaw’ is merely the sum of the individual words comprising that element. The structure of the mark and the meaning of the words are entirely conventional. The mark is completely unambiguous and contains no hidden meaning which could diminish the clearly descriptive message conveyed.
25      Following that analysis, the Board of Appeal was right to conclude that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009.
26      That finding could not be affected by the other arguments put forward by the applicant.
27      In the first place, the argument that a mark consisting of elements which may be descriptive must be regarded as distinctive where there is a perceptible difference between those independently descriptive elements and their combination must be rejected. According to case-law, that presupposes that the sign, as a whole, creates an impression which is sufficiently far removed from that given by the combination of the supposedly descriptive words, with the result that the mark applied for is more than the sum of its parts (see judgments of 25 February 2010 in Lancôme v OHIM, C‑408/08 P, ECR, EU:C:2010:92, paragraphs 61 and 62 and the case-law cited, and TRUEWHITE, cited in paragraph 21 above, EU:T:2011:340, paragraph 16 and the case-law cited). As stated in paragraph 22 above, that is not the case here. Although the sign consists of a single word element, the English-speaking public will immediately break it down into two words that it knows, helped by the fact that ‘dual’ and ‘saw’ appear in different colours. Moreover, those words are common, everyday words, which are easily understood by the English-speaking public.
28      In the second place, the applicant submits, in essence, that the Board of Appeal did not take into account the distinctiveness of the figurative mark applied for as a whole, which consists of a combination of individual word and figurative elements.
29      In that respect, it should be noted that, as stated in paragraph 24 above, the Board of Appeal did not fail to take into account the figurative elements in question but considered that those elements were not fanciful or arbitrary. The Board of Appeal endorsed the Examiner’s decision and assessments, including as regards the colours and other figurative elements.
30      In fact, the black rectangular background is only a slight variation on a basic geometrical shape. The slanted left side does not in itself have the effect of indicating origin. The letters ‘d’ and ‘a’ hardly differ from the font commonly used in advertising material and so will be perceived as a normal typeface. Likewise, the colours black, white and green are frequently used to attract consumers’ attention. More specifically, the colour green, which is traditionally associated with nature and, as a consequence, is used as the colour of the environmental movement or political groups advocating environmental protection, in respect of the goods and services at issue, will refer to the fact that the tools are intended for agricultural use or that they are ecological or environmentally friendly.
31      The argument that the sign applied for has a very highly figurative component which determines its overall impression and dominates the mark applied for as a whole must therefore be rejected.
32      In the third place, as regards the argument that OHIM registered signs in other cases including the words ‘dual’ or ‘saw’, with, to a greater or lesser extent, a close connection to the goods and services claimed, it should be noted that, according to settled case-law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign can be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of the Boards of Appeal (judgment of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47).
33      Furthermore, even assuming that the situations are identical, it should be noted that, according to settled case-law, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. None the less, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered. That examination must 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 (judgment of 13 June 2014 in K-Swiss v OHIM — Künzli SwissSchuh (Parallel stripes on a shoe), T‑85/13, EU:T:2014:509, paragraph 46; see also, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 18 above, EU:C:2011:139, paragraphs 74 to 77).
34      In the present case, the Board of Appeal concluded, on the basis of a full examination and taking into account the perception of the relevant public, that the mark was descriptive in respect of the goods and services in question. As is clear from paragraphs 22 et seq. above, that finding is in itself sufficient for it to be held that, in relation to the goods and services in question, registration of the figurative sign DUALSAW as a Community trade mark is caught by the absolute ground for refusal in Article 7(1)(c) of Regulation No 207/2009. It follows that the applicant cannot reasonably rely, for the purpose of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on OHIM’s previous decisions (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 18 above, EU:C:2011:139, paragraphs 78 and 79).
35      Fourthly and finally, the argument relating to the registration, by the United States Patent and Trademark Office (USPTO), of the figurative mark DUALSAW for several identical goods in the USA with no objection must also be rejected.
36      In that regard, it is sufficient to recall that the Community trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system (judgments of 5 December 2000 in Messe München v OHIM (electronica), T‑32/00, ECR, EU:T:2000:283, paragraph 47 and 21 January 2009 in giropay v OHIM (GIROPAY), T‑399/06, EU:T:2009:11, paragraph 46). Consequently, the registrability or protectability of a sign as a Community mark must be assessed by reference only to the relevant EU rules. Accordingly, OHIM and, as the case may be, the European Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated (judgments of 27 February 2002 in Streamserve v OHIM (STREAMSERVE), T‑106/00, ECR, EU:T:2002:43, paragraph 47, and GIROPAY, cited above, EU:T:2009:11, paragraph 46).
37      It follows from the above that the Board of Appeal was correct to conclude that the sign in question was descriptive, for the purposes of Article 7(1)(c) of Regulation No 207/2009.
38      The first plea in law must therefore be rejected.
39      As regards the second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, it must be pointed out that, as is clear from Article 7(1) of that regulation, it is sufficient that one of the absolute grounds for refusal listed in that provision applies in order for the sign not to be registrable as a Community trade mark (judgment of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29).
40      Consequently, the action must be dismissed in its entirety and there is no need to examine the substance of the second plea in law.
Costs
41      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.
42      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Infusion Brands, Inc. to pay the costs.
Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 3 December 2015.
[Signatures]
* Language of the case: English.