JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
26 February 2016 (*)
(Community trade mark — Invalidity proceedings — International registration designating the European Community — Word mark HOT SOX — Absolute grounds for refusal — Lack of distinctive character — Distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑543/14,
provima Warenhandels GmbH, established in Bielefeld (Germany), represented by J. Croll and H. Prange, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Renfro Corp., established in Mount Airy, North Carolina (United States), represented by C. Schenk, M. Best, U. Pfleghar and S. Schäffner, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 May 2014 (Case R 1859/2013-2), concerning invalidity proceedings between provima Warenhandels GmbH and Renfro Corp.,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 July 2014,
having regard to the response of OHIM lodged at the Court Registry on 4 December 2014,
having regard to the response of the intervener lodged at the Court Registry on 22 December 2014,
having regard to the reply lodged at the Court Registry on 27 April 2015,
having regard to the decision of 1 June 2015 refusing to allow a rejoinder to be lodged by the intervener,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 5 June 2008, the intervener, Renfro Corp., notified the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)) of international registration EI 962 161 of the word mark HOT SOX designating the European Union. Protection of the international registration was granted on 20 April 2009.
2        The goods covered by the international registration are in Class 25 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: ‘hosiery’.
3        On 7 May 2012, the applicant, provima Warenhandels GmbH, filed an application for a declaration of invalidity of the international registration (‘the contested mark’) in accordance with Article 158 of Regulation No 207/2009, read in conjunction with Article 52(1)(a) and Article 7(1)(b) and (c) of that regulation.
4        On 26 July 2013, the Cancellation Division rejected the application for a declaration of invalidity and ordered the applicant to bear the costs of the proceedings. It found, in essence, that the applicant had not shown that the contested mark had been registered contrary to Article 7(1)(b) and (c) of Regulation No 207/2009.
5        On 23 September 2013, the applicant filed an appeal against the decision of the Cancellation Division under Articles 58 to 64 of Regulation No 207/2009.
6        By decision of 13 May 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal, finding, in essence, that the contested mark had not been granted protection in the European Union in infringement of Article 7 of Regulation No 207/2009, in so far as it was neither descriptive of the goods at issue nor devoid of distinctive character for them. In particular, the Board of Appeal noted that, even if the element ‘sox’ were understood by the consumer as being a misspelling of the word ‘socks’, the word ‘hot’ was unnatural and was undesirable when it was used for socks, indeed any form of clothing, and was not a characteristic of those goods. Consequently, the contested mark HOT SOX, interpreted as ‘high temperature socks’ is not descriptive or devoid of distinctive character for the goods at issue.
7        As regards the other meanings of the word ‘hot’, namely, first, ‘currently fashionable’ and, second, ‘erotic’ or ‘sexy’, the Board of Appeal found that those words, associated with the word ‘sox’, were not descriptive of the goods at issue.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision and amend it by declaring the action to be well founded and by granting the application for a declaration of invalidity;
–        order OHIM and the intervener to pay the costs, including those incurred before the Board of Appeal.
9        OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
10      In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 158 of Regulation No 207/2009, read in conjunction with Article 52(1)(a) and Article 7(1)(c) of that regulation, and, second, infringement of Article 158 of Regulation No 207/2009, read in conjunction with Article 52(1)(a) and Article 7(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 158 of Regulation No 207/2009, read in conjunction with Article 52(1)(a) and Article 7(1)(c) of that regulation
11      The applicant claims that the contested mark was registered in infringement of Article 7(1)(c) of Regulation No 207/2009 in so far as the sign HOT SOX is purely descriptive of socks.
12      OHIM and the intervener challenge the applicant’s assertions.
13      Under Article 158(2) of Regulation No 207/2009, the application for invalidation of the effects of an international registration designating the European Community is to take the place of an application for a declaration of revocation as provided for in Article 51 or for a declaration of invalidity as provided for in Article 52 or Article 53 of that regulation.
14      According to Article 52(l)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where the Community trade mark has been registered contrary to the provisions of Article 7 of that regulation.
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 are not to be registered. Furthermore, Article 7(2) of Regulation No 207/2009 provides that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
16      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31; 27 February 2002 in Ellos v OHIM (ELLOS), T‑219/00, ECR, EU:T:2002:44, paragraph 27; and 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 12).
17      Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service 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 positive, or to avoid it, if it proves 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 TRUEWHITE, cited in paragraph 16 above, EU:T:2011:340, paragraph 13).
18      It follows that, in order for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods and services in question or one of their characteristics (see judgment in TRUEWHITE, cited in paragraph 16 above, EU:T:2011:340, paragraph 14 and the case-law cited).
19      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 (see judgment of 11 April 2013 in CBp Carbon Industries v OHIM (CARBON GREEN), T‑294/10, EU:T:2013:165, paragraph 17 and the case-law cited).
20      It should also be noted that a sign’s descriptive nature can be assessed only, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (judgments of 27 February 2002 in Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR, EU:T:2002:41, paragraph 38, and TRUEWHITE, cited in paragraph 16 above, EU:T:2011:340, paragraph 17).
21      In the present case, it should be noted, as the applicant does, that hosiery (clothing items made from net fabric such as stockings, tights, socks or knitwear) are everyday consumer goods, aimed at the average consumer who will demonstrate an average level of attention with regard to those goods. Inasmuch as the contested mark is composed of words from English, it is with regard to the English-speaking public of the European Union that its descriptive character must be assessed.
The relevant public’s understanding of the word ‘sox’
22      The applicant claims that the word ‘sox’, despite a misspelling, will be understood by the relevant public as referring to socks and is, therefore, descriptive of articles of hosiery.
23      During the administrative proceedings before OHIM and before the General Court, the applicant adduced evidence that, in its view, demonstrates the use of the word ‘sox’ for descriptive purposes for socks as regards the English and German-speaking public.
24      The intervener argues that the applicant has not adduced evidence to the effect that the element ‘sox’ will be perceived as an equivalent of the word ‘socks’. In that regard, the intervener adds that the word ‘sox’ is used in current American English, which is not the same as the English spoken in the European Union.
25      OHIM, for its part, acknowledges that the element ‘sox’, although it may be interpreted as referring to the word ‘socks’, is nevertheless a non-standard and fanciful spelling of that word which is more common in the United States than in Europe.
26      In that regard, it should be noted that the Board of Appeal did not expressly rule on the question of whether the English-speaking public of the European Union will interpret the element ‘sox’ as referring to socks.
27      It is clear that although the element ‘sox’ does not correspond to the word for socks in English, it cannot be excluded that the relevant consumer will understand it as referring to socks, forming part of the articles of hosiery covered by the contested mark. Admittedly, the element ‘sox’ has a particular spelling inasmuch as the letters ‘c’, ‘k’ and ‘s’ of the word ‘socks’ are replaced by the letter ‘x’. Nevertheless, that particular spelling does not induce a phonetic difference between two words. Since, as a word mark, the contested mark is intended to be used orally, its particular spelling cannot be considered to be a creative element which may distinguish between the element ‘sox’ and the word ‘socks’. Therefore, here, the effect of that particular spelling on the assessment of the descriptive character of the element ‘sox’ is negligible or non-existent (see, to that effect, judgment of 16 September 2008 in ratiopharm v OHIM (BioGeneriX), T‑48/07, EU:T:2008:378, paragraph 30 and the case-law cited).
28      In contrast, contrary to what the applicant claims, in the evidence which it submitted during the administrative proceedings, the element ‘sox’ is used as a trade mark or trade name. In fact, nowhere in the evidence is the element ‘sox’ used in isolation, and it does not replace the word ‘socks’. Furthermore, in part of the evidence adduced, alongside the element ‘sox’ the word ‘socks is also used with correct spelling. It should also be added that the mere use of the element ‘sox’ does not mean that the public will perceive it descriptively.
29      In any event, as has been noted in paragraph 19 above, it is not enough that one of the elements of a sign is descriptive; the descriptive character must be established for the sign as a whole.
The meanings of the contested mark HOT SOX
30      As correctly noted by the Board of Appeal in paragraph 24 et seq. of the contested decision, the word ‘hot’ has several meanings in English. That word is an adjective in English, meaning, inter alia, ‘a high temperature’ or ‘very warm’, ‘currently popular, fashionable or in high demand’ and ‘lustful or erotic’.
31      As regards, first, the meaning of the word ‘hot’ as ‘a high temperature’ in relation to the element ‘sox’, the Board of Appeal found, in paragraph 20 of the contested decision, that the contested mark could not be interpreted as meaning ‘warm socks’, since the word ‘hot’ meant ‘high temperature’ and was not synonymous with the word ‘warm’ which is a common adjective to describe clothes which preserve the warmth of the human body. It specified that, unlike ‘warm socks’, wearing ‘hot socks’ (high temperature socks) could be unpleasant. The Board of Appeal concluded that the word ‘hot’, when it concerned temperature, was not a word usually associated with items of clothing, so that the contested mark was fanciful for the goods at issue.
32      The applicant submits that the Board of Appeal was wrong to find that the element ‘hot’ will not be understood by the target public in the sense of ‘warm’. It claims that the element ‘hot’ (extremely warm) constitutes the reference to one of the essential characteristics of socks. That interpretation of the word is grasped immediately and without further thought by the relevant public.
33      In that regard, clearly, as the Board of Appeal found, the adjective ‘hot’ in its meaning of ‘extremely warm’ or ‘very high temperature’ is not descriptive of the goods at issue, and in particular of socks, since it does not describe their characteristics. It should be noted that the applicant seeks, in essence, to portray the word ‘hot’ as a synonym of the word ‘warm’. However, those two words have very distinct meanings. Although the word ‘warm’, associated with ‘sox’, describes warm socks, that is clearly not the case of the word ‘hot’, which, meaning ‘extremely warm’ or ‘very high temperature’, describes neither a characteristic of socks nor their purpose. Socks are worn to keep feet warm or to warm them, but not to make them hot, which could happen if ‘hot socks’ were worn. As claimed by the intervener, the word ‘hot’ is not a positive or common characteristic designating temperature in the context of clothing. No consumer would wish to have socks which caused hot feet.
34      Furthermore, contrary to the applicant’s assertions, the contested mark does not mean ‘warming socks’. To describe such socks, the word used in English is ‘warming’ socks.
35      In that regard, the fact that the applicant sells socks which can be reheated in a microwave oven is irrelevant, for the contested mark is not descriptive of those types of socks either. As stated by OHIM, the purpose of such socks is to obtain a lasting warming effect and not a ‘very high temperature’.
36      The fact that the German public might know of the socks which the applicant sells under the trade mark HOT SOX is also irrelevant. In fact, the German public’s knowing of those socks does not mean that the German public would perceive the inscription as being descriptive. As OHIM states, in the evidence adduced by the applicant relating to microwave heated socks, the sign HOT SOX is not used as a trade mark.
37      The Board of Appeal therefore correctly considered that the word ‘hot’ in the sense of ‘extremely warm’ or ‘very high temperature’ associated with the goods at issue was not descriptive of them or of their characteristics.
38      As regards, second, the meaning of the word ‘hot’ as ‘currently popular, fashionable or in demand’, the Board of Appeal considered, in paragraph 27 of the contested decision, that the contested mark did not designate ‘currently popular socks’, since the definition of the word ‘hot’ as ‘fashionable’ was one of its least recognised meanings and that that word had too many definitions to give the word ‘socks’ a clearly definable meaning. Similarly, it considered that the element ‘sox’ presented a non-standard and fanciful spelling of the word ‘socks’.
39      The applicant claims that the sign HOT SOX may also be interpreted as meaning socks which are ‘currently popular’ or ‘in demand’. It criticises the Board of Appeal for having, by its statements, disregarded the fact that a word sign must be excluded from registration under Article 7(1)(c) of Regulation No 207/2009 if by at least one of its possible meanings it designated a characteristic of the goods concerned.
40      In that regard, it should be borne in mind, as the applicant maintains, that a word sign must be excluded from registration, under Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment in OHIM v Wrigley, cited in paragraph 16 above, EU:C:2003:579, paragraph 32).
41      In stating that the definition of the word ‘hot’ as ‘fashionable’ was one of its least recognised meanings and that that word had too many definitions to give the word ‘socks’ a clearly definable meaning, the Board of Appeal failed to apply the law cited in paragraph 40 above. The fact that one of the possible meanings of a mark is descriptive of the goods which it covers suffices for it to be excluded from registration or cancelled after an application for a declaration of invalidity based on Article 52(1)(a) of Regulation No 207/2009 has been made. It is therefore irrelevant that the meaning of the word ‘hot’ as ‘currently popular, fashionable or in demand’ could be one of the least recognised among its many meanings.
42      However, as is clear from the case-law referred to in paragraph 18 above, to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods in question or of one of their characteristics.
43      In the present case, nothing in the file before the Court gives grounds for assuming that English-speaking consumers in the European Union, when faced with the contested mark, will immediately perceive it, without any reflection, as meaning ‘fashionable socks’ or ‘currently popular socks’. It is therefore unlikely that the contested mark, taken as a whole, serves, in normal usage from the point of view of the relevant public, to designate ‘socks currently popular or in demand’, as stated by OHIM.
44      Besides, it should be noted, as the intervener does, that the only date relevant for the purposes of the assessment of an application for a declaration of invalidity under Article 52(1)(a) of Regulation No 207/2009 is the date of filing of the application for the mark at issue. The fact that the case-law accepts the inclusion of information after that date, far from weakening that interpretation of Article 52(1)(a) of Regulation No 207/2009, supports it, since taking it into account is possible only provided that that information relates to the situation at the date of filing the application for a trade mark (see, to that effect, judgment of 3 June 2009 in Frosch Touristik v OHIM — DSR touristik (FLUGBÖRSE), T‑189/07, ECR, EU:T:2009:172, paragraph 19).
45      It follows that the contested mark in the sense of ‘fashionable socks’ or ‘currently popular socks’ had to be potentially descriptive when the protection of the international registration was sought in the European Union, that is to say, on 5 June 2008.
46      In the present case, in June 2008, it had not been established that the contested mark could be interpreted in the sense of ‘fashionable socks’ or ‘currently popular socks’.
47      The contested mark will therefore not be understood to refer to fashionable socks or currently popular socks by the relevant public.
48      As regards, third, the meaning of the word ‘hot’ as ‘erotic or sexy’, the applicant submits that the contested mark could also mean ‘sexy socks’.
49      In that regard, it should be noted, as the Board of Appeal does (see paragraph 26 of the contested decision), that it is highly unlikely that the average consumer when faced with the contested mark interprets it as referring to ‘erotic or sexy socks’, since a pair of socks is not generally perceived as being sexually provocative.
50      As regards the decisions of the Deutsches Patent- und Markenamt (the German Patent and Trademarks Office) on which the applicant relies to show the descriptive character of the contested mark, it should be recalled that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system. Accordingly, OHIM and, if appropriate, the European Union judicature are not bound by decisions given in the Member States, which constitute only one factor, without being given decisive weight, which may be taken into consideration in invalidity proceedings relating to a Community trade mark (judgments of 16 December 2010 in Ilink Kommunikationssysteme v OHIM (ilink), T‑161/09, EU:T:2010:532, paragraph 40; 7 February 2012 in Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, ECR, EU:T:2012:58, paragraph 35; and 30 May 2013 in DHL International v OHIM — Service Point Solutions (SERVICEPOINT), T‑218/10, EU:T:2013:281, paragraph 56).
51      Moreover, as is clear from paragraph 30 of the contested decision, the Board of Appeal did take into account the decisions of the Deutsches Patent- und Markenamt to which the applicant refers. However, the Board of Appeal found, in essence, that, since the application for a declaration of invalidity of the contested mark was based on its meaning in English, more importance should be given to the fact that the trade mark HOT SOX was registered in the English-speaking countries, namely, the United Kingdom and Ireland.
52      Furthermore, in order to ascertain whether the intervener’s trade mark is descriptive of the goods or services in question in the non-English-speaking Member States, it must be determined whether, in those States, it can 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 — those goods or those services. In that regard, it has been held that the sole fact of a widespread knowledge of English, on the part of the relevant public or a significant section thereof, is not sufficient if English was not actually used in that context to address that public (see, to that effect, judgment of 15 October 2008 in Powerserv Personalservice v OHIM — Manpower (MANPOWER), T‑405/05, ECR, EU:T:2008:442, paragraphs 73 and 76).
53      As regards, finally, the reference made by the applicant in its reply to the decision of the examiner of OHIM of 24 February 2015 on the sign Thermo Sox, it is clear that that decision does not relate to the sign HOT SOX, but the sign Thermo Sox. The applicant cannot therefore usefully rely on that decision in the context of the present dispute.
54      In any event, it should be borne in mind that although, having regard to the principles of equal treatment and sound administration, OHIM must take into account the decisions already adopted and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must however be consistent with respect of the principle of legality, which prevents a person applying for registration of a sign as a trade mark from relying, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment of 23 October 2015 in Hansen v OHIM (WIN365), T‑264/14, EU:T:2015:803, paragraph 38; see also, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 76).
55      In the present case, as has been noted above, the Board of Appeal was right to consider that the contested mark was not descriptive in respect of the goods covered by it.
56      It follows that the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 158 of Regulation No 207/2009, read in conjunction with Article 52(1)(a) and Article 7(1)(b) of that regulation
57      As part of its second plea, the applicant submits that since the contested mark is descriptive of characteristics of articles of hosiery, it is, therefore, necessarily devoid of distinctive character in relation to those goods. It adds that even the ambiguity of the sign does not give it the necessary distinctive character, since the various possible meanings are relevant. Consequently, the contested mark does not operate as indication of origin.
58      OHIM and the intervener challenge the applicant’s assertions.
59      It must be remembered that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
60      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 at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 20 May 2009 in CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 33, and 21 January 2011 in BSH v OHIM (executive edition), T‑310/08, EU:T:2011:16, paragraph 23).
61      The distinctive character of a sign 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 of them by the relevant public (judgments of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 34, and 9 September 2010 in OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, ECR, EU:C:2010:508, paragraph 32).
62      The Board of Appeal held, in paragraph 29 of the contested decision, that the contested mark was not of distinctive character either. In particular, it noted that the word ‘hot’ does not normally describe socks and that the incorrect spelling of the element ‘sox’ would attract the attention of consumers. It follows that, according to the Board of Appeal, the contested mark may be an indicator of the commercial origin of the goods at issue and that consumers may, without difficulty, repeat or avoid purchasing goods bearing the trade mark on a subsequent occasion.
63      That assessment by the Board of Appeal must be upheld. The fact that the relevant consumer will recognise the element ‘sox’ as a misspelling of the word ‘socks’ does not in any way mean that that spelling is usual for it.
64      The word ‘hot’, unusual for articles of hosiery, and an incorrect spelling of the word ‘socks’ form a sufficiently original whole to have a minimal distinctive character to avoid the absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009.
65      Similarly, it is necessary to reject the applicant’s argument, presented as part of its first plea in law, concerning an alleged contradiction in the reasoning of the Board of Appeal in paragraph 27 of the contested decision. The Board of Appeal held that the element ‘sox’ was a non-ordinary and fanciful spelling of the word ‘socks’ and although that misspelling is not, certainly, in itself, sufficiently pronounced to lend the trade mark distinctive character, the fact remains that, as the element ‘sox’ is a short element and the misspelling is very clear, consumers will be open to the possibility that that trade mark is an indication of the commercial origin.
66      It is clear from paragraph 27 of the contested decision that the Board of Appeal considered that, in the circumstances of the case, given the size of the element ‘sox’ and the fact that the misspelling of it is very obvious, that element may indicate the commercial origin of the goods at issue even though the mere existence of a misspelling does not automatically confer distinctive character on signs. That reasoning is perfectly clear and is moreover not vitiated by any error.
67      It follows that the second plea in law is unfounded. Therefore, it must be rejected, and the action in its entirety as well, without it being necessary to rule on the application for amendment of the contested decision.
Costs
68      Under Article 134(1) 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, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders provima Warenhandels GmbH to bear the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 26 February 2016.
[Signatures]
* Language of the case: English.