JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
7 October 2015 (*)
(Community trade mark — International registration designating the European Community — Word mark EQUIPMENT FOR LIFE — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)
In Case T‑642/14,
JP Divver Holding Company Ltd, established in Newry (United Kingdom), represented by A. Franke and E. Bertram, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 16 June 2014 (Case R 64/2014-2) concerning the international registration designating the European Community of the word mark EQUIPMENT FOR LIFE,
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 29 August 2014,
having regard to the response lodged at the Court Registry on 18 December 2014,
having regard to the decision of 27 January 2015 refusing leave to lodge a reply,
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 16 July 2013, the applicant, JP Divver Holding Company Ltd, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration of the word mark EQUIPMENT FOR LIFE, bearing the reference IR 1171023 and designating the European Community.
2        On 15 August 2013, the international registration was notified to 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).
3        The goods and services in respect of which registration was sought are in Classes 18, 25 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 to the following description:
–        Class 18: ‘Luggage, wheeled luggage, wallets, purses, backpacks, pouches, bags, shoulder bags, travel bags, duffel bags and messenger bags’;
–        Class 25: ‘Clothing, namely, caps, shirts, jackets, socks, shorts, pant[s] and sweaters’;
–        Class 35: ‘Mail order, retail and computerised online ordering service in the field of clothing and luggage’.
4        By letter of 22 August 2013, the examiner informed the applicant that, pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, the sign at issue could not be registered.
5        On 22 October 2013, the applicant submitted its observations in reply.
6        By decision of 24 October 2013, the examiner confirmed his initial objections and rejected the application for registration in respect of all the goods and services referred to in paragraph 3 above on the basis of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, on the ground that the mark was devoid of any distinctive character. The examiner found that the sign EQUIPMENT FOR LIFE would be perceived as merely a promotional laudatory message, the function of which is to describe a characteristic of the goods and services concerned. Moreover, according to the examiner, that sign did not have an unusual structure.
7        On 27 December 2013, 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.
8        By decision of 16 June 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal for the reasons given by the examiner. Given that the mark was composed of English words, the Board of Appeal found that the public by reference to whom the absolute ground had to be assessed consisted of, at least, the general public who are reasonably well informed and reasonably observant and circumspect in the Member States in which English is an official language, that is to say, Ireland, Malta and the United Kingdom (see paragraph 15 of the contested decision). Moreover, the Board of Appeal concluded, having regard to the goods and services designated by the mark, that the relevant public would immediately understand, without further analytical effort, the laudatory message conveyed by the expression ‘equipment for life’, namely that those goods are long-lasting, and would not perceive it as an indication of the commercial origin of those goods and the related services (see paragraph 23 of the contested decision). The sign had therefore to be rejected because it was incapable of catching the consumer’s attention beyond its unambiguous laudatory meaning, and of serving to identify commercial origin (see paragraph 24 of the contested decision).
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 action;
–        order the applicant to pay the costs.
Law
11      The applicant raises a single plea in law in support of its action, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009.
12      Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
13      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 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 (see judgments of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, ECR, EU:C:2011:680, paragraph 42 and the case-law cited, and 10 October 2007 in Bang & Olufsen v OHIM (Shape of a loudspeaker), T‑460/05, ECR, EU:T:2007:304, paragraph 27 and the case-law cited).
14      It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different commercial origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the proprietor of the mark and that the proprietor is responsible for their quality (see judgment in Apollo Group v OHIM (THINKING AHEAD), T‑473/08, EU:T:2009:442, paragraph 26 and the case-law cited).
15      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, secondly, by reference to the perception of the relevant public (see judgment in Freixenet v OHIM, cited in paragraph 13 above, EU:C:2011:680, paragraph 43 and the case-law cited).
16      As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use (judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 41, and 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 35).
17      As regards the assessment of the distinctive character of such marks, the Court of Justice has already held that it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (judgments in OHIM v Erpo Möbelwerk, cited in paragraph 16 above, EU:C:2004:645, paragraphs 32 and 44, and Audi v OHIM, cited in paragraph 16 above, EU:C:2010:29, paragraph 36).
18      The Court of Justice has therefore held that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (judgments in OHIM v Erpo Möbelwerk, cited in paragraph 16 above, EU:C:2004:645, paragraphs 31 and 32, and Audi v OHIM, cited in paragraph 16 above, EU:C:2010:29, paragraph 39).
19      It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (judgment in Audi v OHIM, cited in paragraph 16 above, EU:C:2010:29, paragraphs 44 and 45; order of 12 June 2014 in Delphi Technologies v OHIM, C‑448/13 P, EU:C:2014:1746, paragraph 37; judgments of 11 December 2012 in Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, EU:T:2012:663, paragraph 22, and 6 June 2013 in Interroll v OHIM (Inspired by efficiency), T‑126/12, EU:T:2013:303, paragraph 24).
20      The applicant submits, first, that the expression ‘equipment for life’ does not have several meanings, nor a clear meaning because it requires interpretation and will be interpreted as an unusual combination of words in relation to the relevant goods. For the purposes of interpreting that expression, the applicant submits that it is appropriate to take as a basis the definition of the terms ‘equipment’ and ‘life’ adopted by the examiner and taken up by the Board of Appeal, as follows:
–        ‘equipment’: ‘the tools, machines or other things that you need for a particular job or activity’;
–        ‘life’: ‘the period of time during which something is still good enough to be used’.
21      The applicant is of the opinion that the combination of the words ‘equipment’ and ‘life’ does not convey any clear, descriptive or laudatory meaning.
22      As regards the word ‘equipment’, the applicant submits that it will not be used in order to designate the goods concerned, but rather goods with a technical background or function. Consequently, the word ‘equipment’ would not be descriptive of the goods claimed and would be somewhat removed from them. The applicant states that the Board of Appeal did not take into account the nature of the word ‘equipment’, nor did it assess the distinctive character of the sign at issue with regard to the goods and services concerned. Moreover, the applicant disputes the Board of Appeal’s assertion that the definition of that word is rather broad inasmuch as it refers to other ‘things’ such as goods that the relevant public might wish to use, for example, for activities such as hiking or travelling in general. In this connection, the applicant states that even in the context of the outdoor activities suggested by the Board of Appeal, the target consumer will not use the word ‘equipment’ for clothing or bags and luggage, but rather for hiking sports apparatus or instruments such as compasses or ropes.
23      As regards the element ‘for life’, the applicant disputes the Board of Appeal’s interpretation and claims that that expression would not immediately be understood by the relevant public as meaning ‘lasts for a lifetime’ or ‘long-lasting’. The applicant claims that if the Board of Appeal’s arguments concerning the interpretation of that expression were followed, the expression would not be ‘for life’, but rather ‘products for a lifetime of use’.
24      Moreover, the applicant submits that, taking account of the goods in question, the target consumer will not believe they last a lifetime or even that they are long-lasting goods. Consequently, the target consumer would not understand the expression ‘equipment for life’ as referring to equipment that can be used for decades. In this connection, the applicant states that the goods concerned are regularly replaced by new, more fashionable items, so that consumers of those goods do not expect them to be usable for many years.
25      Accordingly, the applicant states that the Board of Appeal’s assessment and interpretation are inconsistent and unclear given that the mark at issue does not convey either a laudatory meaning or a description of the goods in question, but will be perceived by the relevant public as an indication of their commercial origin and not as a promotional formula, even though it might vaguely suggest an idea, albeit without conveying a clear meaning.
26      OHIM disputes the applicant’s arguments.
27      First of all, it must be observed that the Board of Appeal, in paragraphs 15 and 16 of the contested decision, correctly identified the relevant public as being the English-speaking general public of the European Union, since the sign is composed of English words that have a meaning for that public.
28      Next, as regards the assessment of the sign, the Court points out that, in the case of a word mark made up of several elements, the relevant meaning of that mark, established on the basis of all its constituent elements and not only on one of them, must be taken into account (judgment of 6 November 2007 in RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN), T‑28/06, ECR, EU:T:2007:330, paragraph 32). Therefore, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their components, considered in isolation, but must, on any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. 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 character. In other words, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. 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 (see judgment of 8 February 2011 in Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, ECR, EU:T:2011:33, paragraph 50 and the case-law cited).
29      So far as the definitions of the words ‘equipment’ and ‘life’ given by the Board of Appeal are concerned, those definitions have not been disputed by the applicant, which has, by contrast, disputed only their application to the goods in the present case.
30      As regards the word ‘equipment’, the Court points out that it has already held that, irrespective of the specific intended purpose of each of the goods or services covered by the mark applied for, that word is, because of its meaning, immediately perceptible by the relevant public as relating to all of the elements required for the exercise of an activity. The semantic content of the word ‘equipment’ thus conveys to the consumer general information on the nature of the goods and services covered by the mark applied for, so that any undertaking may use such a mark in order to promote its goods and services, including, as in the present case, those in Classes 18, 25 and 35 (judgment of 16 May 2013 in Restoin v OHIM (EQUIPMENT), T‑356/11, EU:T:2013:253, paragraph 45).
31      Moreover, as OHIM has stated, in an English dictionary available on the internet (http://dictionary.cambridge.org/dictionary/british/equipment), the definition of the word ‘equipment’ refers, inter alia, to ‘the set of necessary clothing for a particular purpose’. Similarly, the definition of that word in another English dictionary on the internet (http://www.merriam-webster.com/dictionary.equipment) refers to ‘the set of articles or physical resources serving to equip a person or thing’.
32      Accordingly, the Court finds, as did OHIM, that the word ‘equipment’ — contrary to what is claimed by the applicant — is also associated with the clothing in Class 25 and is not limited to designating only goods with a technical background or function. The Court finds, as the Board of Appeal stated in paragraph 20 of the contested decision, that the meaning of the word ‘equipment’ is broader than the definition given by the applicant and that that word is often used in very varied market sectors in order to designate a group or a set of things necessary to achieve a certain aim. It should be observed, in that regard, that OHIM gave examples of those sectors, including travel (travel equipment) and sport (fitness equipment, scuba diving equipment).
33      The same is true of the goods concerned in Class 18, as OHIM rightly stated. In that regard, it referred, by way of example, to the expression ‘travel equipment’, which is commonly used to describe backpacks, travel bags and luggage, as is stated on the website http://www.gooutdoors.co.uk/travel.
34      The Board of Appeal’s assessment concerning the services in Class 35, set out in paragraph 23 of the contested decision, must also be upheld, since those services relate directly to trade in the goods in Classes 18 and 25.
35      As regards the expression ‘for life’ as a whole, it must be held that, as paragraph 21 of the contested decision states, in essence, the combination of the preposition ‘for’ with the noun ‘life’ would immediately be understood as indicating an activity that is long-lasting or that lasts for a lifetime (judgment in INSULATE FOR LIFE, cited in paragraph 28 above, EU:T:2011:33, paragraph 51).
36      In the present case, the Court finds that the word ‘life’, as OHIM stated, may be defined as ‘the period between birth and death, or the experience or state of being alive’ and that the word ‘for’ is a preposition meaning ‘intended to reach’.
37      As regards the perception of the expression ‘equipment for life’, the Court finds that, contrary to what is claimed by the applicant, it will be understood, in relation to the relevant goods, as meaning that those goods will last for the lifetime of the purchaser. Thus, that expression suggests, when applied to the goods concerned, that these are very robust, long-lasting, and that they can be made to last a long time. Moreover, the applicant’s argument that that reasoning does not make sense because the goods concerned are regularly replaced by newer, more fashionable items cannot be accepted. The fact that consumers may replace their clothing in order to follow fashion trends does not affect the message about the durability of the goods concerned clearly conveyed by the sign in question.
38      Furthermore, the Court finds that, as stated, in essence, in paragraph 22 of the contested decision, the expression ‘equipment for life’ is immediately comprehensible by the relevant public even if, as regards the meaning accepted by the Court in paragraph 37 above, it is not written in accordance with the rules of English grammar. In that regard, OHIM stated, correctly, that that public did not need special knowledge in order to make a sufficiently clear link between the mark and the goods and to perceive the clear, direct, immediate, and consequently, descriptive message of that mark.
39      It follows from the foregoing that, as the Board of Appeal found in paragraph 23 of the contested decision, the mark EQUIPMENT FOR LIFE will rather be perceived as an unambiguous laudatory message suggesting positive characteristics of the goods and services concerned, given that, in general, consumers regard durability more as a desirable quality of such goods and services than as an indication of their commercial origin.
40      Lastly, the applicant’s argument that the mark applied for has already been registered in the United States, Australia and New Zealand and that earlier decisions taken by OHIM allowed the registration of word marks containing the elements ‘equipment’ or ‘for life’, which shows that the mark at issue is not devoid of distinctive character, must be rejected.
41      The Court considers it appropriate to point out, in this regard, that the Community trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 12 December 2013 in Rivella International v OHIM, C‑445/12 P, ECR, EU:C:2013:826, paragraph 48 and the case-law cited).
42      Consequently, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant EU rules. OHIM, and, as the case may be, the European Union judicature are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark (judgments of 25 March 2014 in Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, EU:T:2014:154, paragraph 53, and 24 June 2014 in 1872 Holdings v OHIM — Havana Club International (THE SPIRIT OF CUBA), T‑207/13, EU:T:2014:570, paragraph 32).
43      Furthermore, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 as interpreted by the European Union judicature and not on the basis of a previous decision-making practice (see judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65 and the case-law cited).
44      In the light of all those considerations, it must be concluded that the Board of Appeal did not make an error of assessment in finding that the mark applied for was devoid of any distinctive character and that it had, therefore, to be refused registration pursuant to Article 7(1)(b) of Regulation No 207/2009.
45      Lastly, that conclusion is not called into question by Article 7(2) of Regulation No 207/2009, which provides that paragraph 1 of Article 7 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Consequently, the Board of Appeal was fully entitled to limit its assessment to Member States in which English is an official language.
46      In the light of all the foregoing considerations, the single plea in law must be rejected and, therefore, the action must be dismissed.
Costs
47      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. Since the applicant has been unsuccessful, it must be ordered to pay OHIM’s costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders JP Divver Holding Company Ltd to pay the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 7 October 2015.
[Signatures]
* Language of the case: English.