ORDER OF THE GENERAL COURT (Eighth Chamber)
12 September 2019(*)
(EU trade mark — Application for EU figurative mark SOFTFOAM — Absolute grounds for refusal — No distinctive character — Descriptive character — Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 — Action manifestly lacking any foundation in law)
In Case T‑182/19,
Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 January 2019 (Case R 1399/2018-2), relating to the application for registration of the figurative sign SOFTFOAM as a European Union trade mark,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva and G. De Baere (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 March 2019,
having regard to the response lodged at the Court Registry on 14 June 2019,
makes the following
Order
Background to the dispute
1        On 18 October 2017, the applicant, Puma SE, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought 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: ‘Footwear’.
4        By decision dated 4 June 2018, the examiner refused the application for registration of the mark SOFTFOAM in respect of all the goods in question, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001.
5        On 20 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the examiner’s decision.
6        By decision of 8 January 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal found that, since footwear and in particular shoe soles can be soft, the word ‘soft’ described a feature and a quality of the relevant goods and the word ‘foam’ described a characteristic of those goods in as much as it could refer to the material used to make shoe soles. It considered that the combination of the words forming the sign SOFTFOAM meant ‘soft foam’. It therefore concluded that the relevant public would immediately and without further reflection understand the sign SOFTFOAM as a reference to the nature, quality and characteristics of the shoes, namely the fact that the shoe soles were made out of soft foam and that they were therefore well-cushioned and comfortable to wear. Accordingly, the sign was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001. In the second place, the Board of Appeal stated that, given the nature of the goods in question, many consumers would consider it important that the shoes have soft soles. It took the view that the relevant public would understand the sign SOFTFOAM as a purely laudatory term. It concluded that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        Under Article 126 of its Rules of Procedure, where an action is manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
10      In the present case, the Court considers that it has sufficient information from the documents before it and has decided to give a decision on the action without taking further steps in the proceedings, even though one of the parties has requested a hearing (see, to that effect, orders of 7 June 2016, Beele Engineering v EUIPO (WE CARE), T‑220/15, not published, EU:T:2016:346, paragraph 12 and the case-law cited, and of 27 November 2018, CMS Hasche Sigle v EUIPO (WORLD LAW GROUP), T‑756/17, not published, EU:T:2018:846, paragraph 11).
11      In support of its action, the applicant essentially raises two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001, and the second alleging infringement of Article 7(1)(b) of Regulation 2017/1001.
12      The Court considers it appropriate to examine the second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001.
13      Under
Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. According to settled case-law, a mark has distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, when that mark serves to identify the goods or services in respect of which registration was applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgments of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited, and of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 52 and the case-law cited).
14      The distinctiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the relevant public’s perception of that sign (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).
15      In the contested decision, as regards the meaning of the mark applied for, the Board of Appeal stated, first, that the word ‘soft’ referred to ‘something that [was] not hard or firm’. Second, it took the view that the word ‘foam’ referred to, ‘inter alia, a mass of small bubbles … formed when air and a liquid [were] mixed together or a soft rubber full of small holes … used, for example, to make mattresses and cushions’, and that it was used to refer to
various kinds of manufactured products which have a soft, light texture like a thick liquid. It considered that there was no perceptible difference between the sign SOFTFOAM and the mere sum of its parts and that the combination of the words ‘soft’ and ‘foam’ followed the word order dictated by English grammar rules and meant ‘soft foam’, that is to say, foam (or rubber) that was not hard or firm.
16      As regards the assessment of the distinctive character of the mark applied for, the Board of Appeal found that, given the nature of the relevant goods (footwear), many consumers would consider it important that the shoes have soft soles. It concluded that the relevant public would immediately and without further reflection understand the sign SOFTFOAM as a purely laudatory term referring to the fact that the shoe soles were made out of soft foam and were therefore well-cushioned and comfortable. As a result, the mark applied for was devoid of any distinctive character and incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods concerned.
17      In the first place, it must be noted that the applicant does not contest the meaning of the word ‘soft’ adopted by the Board of Appeal. It simply claims, in the context of the arguments raised in its first plea in law and seeking to contest the descriptive character of the meaning adopted by the Board of Appeal, that the obvious meaning of the word ‘foam’ is the most common one, namely ‘a loose mass of small bubbles’, like milk foam, bathing foam or shaving foam.
18      In that regard, it is sufficient to note that, by that submission, the applicant does not contest that the word ‘foam’ refers to foam. That argument cannot, therefore, call into question the Board of Appeal’s conclusion that the relevant public would understand the sign SOFTFOAM as referring to ‘soft foam’.
19      In the second place, it must be noted that the applicant’s arguments are based on an incorrect reading of the contested decision. The applicant claims that the Board of Appeal did not consider any criteria for the lack of distinctive character of the mark applied for other than its descriptive character.
20      It is sufficient to state that, in the contested decision, the Board of Appeal did not simply infer the lack of distinctive character of the mark applied for from its descriptive character but conducted an independent analysis of the application of Article 7(1)(b) of Regulation 2017/1001.
21      In addition, as regards the applicant’s argument that the combination of the words ‘soft’ and ‘foam’ creates a neologism emphasising easiness and lightness, it is sufficient to state that this cannot call into question the Board of Appeal’s assessment as regards the laudatory nature of the sign. On the contrary, that argument confirms the fact that the sign SOFTFOAM will not from the outset be perceived by the relevant public as an indication of the commercial origin of the goods in question, but as a laudatory or promotional message, stressing a positive quality of those goods.
22      It follows that, since the applicant has raised no argument that is capable of calling into question the Board of Appeal’s assessment as regards the laudatory nature of the sign SOFTFOAM, it could not call into question the latter’s assessment that the sign has no distinctive character.
23      The second plea in law must therefore be rejected as being manifestly unfounded.
24      According to settled case-law, as is evident from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies in order for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
25      Therefore, since it is apparent from the foregoing that the applicant has not shown that the Board of Appeal erred in refusing registration of the sign SOFTFOAM on the basis of Article 7(1)(b) of Regulation 2017/1001, the first plea in law, alleging infringement of Article 7(1)(c) of that regulation, must be rejected as ineffective.
26      Consequently, the action must be dismissed as manifestly unfounded.
Costs
27      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 EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Puma SE shall pay the costs.
Luxembourg, 12 September 2019.
E. Coulon
A.M. Collins
Registrar
President
*      Language of the case: English.