JUDGMENT OF THE GENERAL COURT (First Chamber)
24 January 2017 (*)
(EU trade mark — Application for the EU word mark STRONG BONDS. TRUSTED SOLUTIONS. — Absolute ground for refusal — No distinctive character — Article 7(1)(b) and (2) of Regulation (EC) No 207/2009)
In Case T‑96/16,
Solenis Technologies LP, established in Wilmington (United States), represented by A. Sanz Cerralbo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer and A. Kusturovic, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 December 2015 (Case R 613/2015-2), concerning an application for registration of the word sign STRONG BONDS. TRUSTED SOLUTIONS. as an EU trade mark,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 February 2016,
having regard to the response lodged at the Court Registry on 17 May 2016,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 13 October 2014, the applicant, Solenis Technologies LP, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign STRONG BONDS. TRUSTED SOLUTIONS.
3        The goods in respect of which registration was sought are in Class 1 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: ‘Chemicals for use in industry; chemicals for use in industrial water treatment; chemicals for use in manufacturing pulp, paper and paperboard; chemicals for use in the mining, biorefining, and oil and gas industries; foam control agents, antifoam agents, hydrophobic aids, sizing agents, alkenyl ketene dimer, styrene acrylic emulsions, alkenyl succinic anhydride, styrene maleic anhydride, alkyl ketene dimer, colloidal silica, paraffin wax emulsions, rosin paste, rosin-based dispersions, poalyacrylamides for use for liquid/solid separation, anionic and cationic polyacrylamides, coagulants, flocculants, charge control agents, colloidal silica, demulsifiers, wet strength resins repulping aids, synthetic resins; thermoset crosslinking resins, polyamide epichlorohydrin, polyamine, polyvinylamine, styrene maleic anhydride, filtering agents, clarifying agents, drainage agents, retention agents, microbiocides, biocides, and deposit control agents’.
4        On 30 October 2014, the examiner, in accordance with Rule 11(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by, inter alia, Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), informed the applicant of his objections to the registration of the mark applied for, which objections were based on Article 7(1)(b) and (2) of Regulation No 207/2009. The applicant maintained its application for registration.
5        By decision of 26 January 2015, the examiner rejected the trade mark application on the basis of Article 7(1)(b) and (2) of Regulation No 207/2009, on the ground that the mark applied for was devoid of any distinctive character.
6        On 25 March 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.
7        By decision of 3 December 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it observed that the sign applied for was an ordinary advertising message, which was devoid of any elements that might enable the relevant public to memorise it easily and immediately as a trade mark in respect of the goods in question. The Board of Appeal therefore found that the mark applied for was not distinctive, at least for the English-speaking part of the relevant public, and that registration of that mark as an EU trade mark had to be refused in accordance with Article 7(1)(b) and (2) of Regulation No 207/2009.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
10      The applicant relies on a single plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009. In essence, it submits that the mark in respect of which registration was sought is a word sign which is capable of indicating the commercial origin of the goods covered by the application for registration and that it therefore has distinctive character.
11      First, the applicant disputes the meaning which the Board of Appeal gave to the word element ‘bonds’, namely that that element refers to the technical properties of the goods in question. The applicant submits that the presence of the word element ‘trusted’ affects the sense in which the word element ‘bonds’ is perceived by the relevant public, with the result that that mark does not refer that public to the goods which it is intended to identify. On the contrary, according to the applicant, the sign STRONG BONDS. TRUSTED SOLUTIONS. will be perceived, as a whole, by the relevant public as referring to the qualities of the undertaking which markets those goods.
12      Secondly, the applicant submits that the mark applied for is not intended to highlight the positive aspects of the goods in question and may be perceived by the relevant public as an indication of the commercial origin of those goods, with the result that it cannot be regarded solely as a promotional slogan.
13      It must be borne in mind that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character must not be registered. Article 7(2) of that regulation states that paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
14      It is apparent from the case-law that a minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (see judgment of 25 September 2015, BSH v OHIM (PerfectRoast), T‑591/14, not published, EU:T:2015:700, paragraph 40 and the case-law cited).
15      In addition, according to settled case-law, a trade mark has distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, if it makes it possible to identify the goods or services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods or services from those originating from other undertakings (see judgment of 28 April 2015, Volkswagen v OHIM (EXTRA), T‑216/14, not published, EU:T:2015:230, paragraph 13 and the case-law cited, and order of 24 June 2015, Wm. Wrigley Jr. v OHIM (Extra), T‑552/14, not published, EU:T:2015:462, paragraph 13 and the case-law cited).
16      In that regard, it must be borne in mind that the signs which are devoid of any distinctive character that are referred to in Article 7(1)(b) of Regulation No 207/2009 are deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services covered by that mark, thus enabling the consumer who acquired those goods or services to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see judgment of 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 14 and the case-law cited).
17      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, secondly, by reference to its perception by the relevant public, which consists of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect (see judgment of 14 September 2009, Lange Uhren v OHIM (Geometric shapes on a watch-face), T‑152/07, not published, EU:T:2009:324, paragraph 127 and the case-law cited).
18      The Court of Justice has already held, as regards assessing the distinctive character of 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, that it was inappropriate to apply to such marks criteria which are stricter than those applicable to other types of sign (see judgments of 11 December 2012, Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, not published, EU:T:2012:663, paragraph 16 and the case-law cited, and of 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 17 and the case-law cited).
19      It follows that a mark consisting of an advertising slogan must be regarded as devoid of any distinctive character if it is liable to be perceived by the relevant public only as a simple 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 (order of 12 June 2014, Delphi Technologies v OHIM, C‑448/13 P, not published, EU:C:2014:1746, paragraph 37; judgments of 11 December 2012, Qualität hat Zukunft, T‑22/12, not published, EU:T:2012:663, paragraph 22, and of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24).
20      It is in the light of those considerations that it must be examined whether, as the applicant maintains, EUIPO infringed Article 7(1)(b) of Regulation No 207/2009 in finding that the mark applied for was devoid of any distinctive character.
21      First, as the Board of Appeal correctly observed in paragraphs 19 and 20 of the contested decision, the goods in question are aimed mainly at a professional public and, furthermore, inasmuch as the mark applied for consists of English words, the relevant public consists of at least the public in the Member States in which English is the official language.
22      Secondly, the Board of Appeal found, in paragraph 23 of the contested decision, that the word ‘strong’ referred to the idea of robustness or solidity, that the word ‘bond’ referred in general terms to adhesive strength, that the word ‘trusted’ referred to that which is regarded as honest and sincere and that the word ‘solution’ evoked a specific answer to, or way of answering, a problem.
23      Thirdly, the Board of Appeal found, in paragraph 24 of the contested decision, that the combination of the elements ‘strong’ and ‘bonds’, in relation to the goods in question, would cause the relevant public immediately to connect the mark applied for with the goods covered by the trade mark application, which are chemical products.
24      Fourthly, the Board of Appeal pointed out, in paragraph 25 of the contested decision, that the association of the word elements ‘trusted’ and ‘solutions’ could be perceived by the relevant public as referring to ‘sincere answers to problems’.
25      Fifthly, as regards the relevant public’s perception of the sign applied for as a whole, it must be stated that the Board of Appeal found, in paragraph 27 of the contested decision, that the relevant public would deduce from that sign that the goods covered by the trade mark application provided solid adhesive strengths or strong bonds that constituted reliable answers to problems or that those goods were trusted solutions.
26      The Board of Appeal concluded, in paragraphs 28 to 30 of the contested decision, that the mark applied for, taken as a whole, was not capable of identifying the origin of the goods covered by the application for registration. According to the Board of Appeal, there was nothing about the mark applied for as a whole, beyond its laudatory meaning, that might enable the relevant public to memorise the sign easily and instantly as a distinctive mark for the goods in question.
27      Furthermore, the Board of Appeal took the view that the meaning of the sign at issue would, immediately and without further thought, be understood as an ordinary advertising message by the relevant public.
28      It must be held that the Board of Appeal did not err in finding that the sign STRONG BONDS. TRUSTED SOLUTIONS. consists of a word sequence which, taken as whole, has a meaning of its own. It must be observed that the sign will easily be understood by the relevant public as meaning that the applicant’s goods provide solid adhesive strengths that constitute reliable answers to problems or that those goods are trusted solutions.
29      It is apparent from all of those considerations that the Board of Appeal was right in finding that the mark applied for would be understood by the relevant public, having regard to the goods in question, as referring to goods which constitute trusted solutions. In other words, the relevant public, faced with the sign at issue, will, at most, understand that the goods in question are reliable, quality goods and will not, beyond that information of a promotional nature, be led to perceive in that sign an indication of a specific commercial origin.
30      Consequently, the Board of Appeal did not make an error of assessment in finding that the mark applied for would directly be perceived by the relevant public as a simple promotional formula which has a laudatory meaning in respect of the goods in question and that it was not capable of making it possible to identify the commercial origin of those goods, for the purposes of Article 7(1)(b) of Regulation No 207/2009.
31      That finding is not called into question by the various claims of the applicant.
32      In the first place, as regards the applicant’s argument that the Board of Appeal erred in finding that the level of attention of the relevant public might be relatively low as regards promotional indications, it is sufficient to state that that argument is ineffective. It is apparent from the contested decision that the Board of Appeal did not take the level of attention of the relevant public into account in its assessment of whether the mark applied for had distinctive character.
33      In the second place, it is necessary to reject applicant’s argument that the relevant public will perceive the term ‘bonds’ in its figurative sense as referring to emotional ties or bonds of affection and will understand the mark applied for, as a whole, as meaning ‘strong or resistant emotional ties and sincere and honest answers to problems’. It must be pointed out that, even if that meaning were to be accepted, the mark applied for would still be a banal slogan the laudatory meaning of which would be clear and unequivocal. The applicant has not established that if the mark applied for had such a meaning, the relevant public would perceive that mark as anything other than a simple and abstract promotional formula or that it might be perceived immediately by that public as an indication of the commercial origin of the goods at issue.
34      In the third place, it must be borne in mind, for the purpose of rejecting the applicant’s claims relating to the fact that the goods at issue are not all characterised by their adhesive properties and that, therefore, the element ‘strong bonds’ in the mark applied for does not refer to a characteristic that is common to all the goods covered by the application for registration, that the mere fact that the semantic content of the word sign applied for does not convey any information about the nature of the goods concerned is not sufficient to make that sign distinctive (see, to that effect, judgment of 25 September 2015, PerfectRoast, T‑591/14, not published, EU:T:2015:700, paragraph 44 and the case-law cited). Furthermore, it has already been held that, taken as a whole, the mark applied for would be understood by the relevant public as referring to goods which constitute trusted solutions, irrespective of whether all the goods marketed by the applicant and covered by the application for registration have strong adhesive properties or not.
35      Consequently, it must be held that the sign at issue will, on account of its inherent meaning, be perceived by the relevant public as a laudatory promotional formula, rather than as providing an indication of the commercial origin of the goods covered by the application for registration.
36      In view of all of those factors, the single plea in law put forward by the applicant must be rejected as unfounded and the action must therefore be dismissed in its entirety.
Costs
37      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.
38      In the present case, 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 (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Solenis Technologies LP to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 24 January 2017.
E. Coulon
I. Pelikánová
Registrar
President
* Language of the case: English.