JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
13 May 2020 (*)
(EU trade mark — International registration designating the European Union — Word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS — Trade mark consisting of an advertising slogan — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑49/19,
View, Inc., established in Milpitas, Delaware (United States), represented by G. Tritton, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 November 2018 (Case R 1625/2018-2), concerning the international registration designating the European Union in respect of the word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and B. Berke, Judges,
Registrar:
A. Juhász-Tóth, administrator,
having regard to the application lodged at the Court Registry on 28 January 2019,
having regard to the response lodged at the Court Registry on 17 April 2019,
further to the hearing on 27 February 2020,
gives the following
Judgment
Background to the dispute
1        On 2 November 2017, the applicant, View, Inc., obtained from the World Intellectual Property Organisation (WIPO) international registration designating the European Union, under number 1381213, of the word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS.
2        On 21 December 2017, the European Union Intellectual Property Office (EUIPO) received notification of international registration of the word mark CREATE DELIGHTFUL ENVIRONMENTS, 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).
3        The goods and services for which the protection of the word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS has been claimed in the European Union fall in Classes 9, 19 and 37 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 for each of those classes to the following description:
–        Class 9: ‘Electronic controller for adjusting and controlling the tinting of insulated glass window units; computer programs, downloadable computer programs and mobile device software, all for use in adjusting and controlling the tinting of insulated glass window units’;
–        Class 19: ‘Insulated glass window units with electrochromic coating for windows used in building construction’;
–        Class 37: ‘Installation, maintenance and repair services for glass units for windows; providing information regarding the care, installation, maintenance and repair of glass units for windows; consultation services regarding the installation, maintenance and repair of glass units for windows’.
4        By decision of 20 June 2018, the examiner refused registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) of Regulation No 2017/1001. The examiner held that the sign requested was devoid of distinctive character and would be perceived by the relevant English-speaking public as a promotional statement that simply served to highlight the positive aspects of the goods and services concerned.
5        On 17 August 2018, the applicant brought an appeal before EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
6        By decision of 27 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, it held that, as the sign requested consisted of the combination of four English words, the relevant public was the English-speaking public of the European Union, comprising in part the general public and in part a specialist public with a high level of attention. In the second place, it held that the expression ‘create delightful human environments’ had a clear, ordinary meaning in everyday language that did not conflict with the rules of English grammar, and carried the overall message that by purchasing the goods and services in question the customer would enjoy the benefits promised, by using them to create pleasant and comfortable conditions to live in. In its view, the relevant public would perceive the sign only as a laudatory and promotional statement, intended to highlight the positive aspects of the goods and services in question. In the third place, it examined that sign specifically in relation to the goods in Classes 9 and 19 and the services in Class 37, and held that the sign merely highlighted the positive aspects of those goods and services, namely creation of a balance between natural light, heat, fading and harmful radiation.
7        Moreover, the Board of Appeal held that, although the case-law of the Court clarified certain questions relating to the acceptability of slogans as trade marks, that case-law could and should not be read as suggesting that any promotional phrase could now be registered as a trade mark merely because it was presented in the form of an advertising slogan. In the present case, it first of all considered that there was nothing about the sign applied for as a whole that might, beyond its obvious laudatory promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question, irrespective of whether it was a specialist public or the public at large. It next held that that mere promotional slogan, which required no interpretation and did not set off any cognitive process in the minds of the relevant public, conveyed nothing that would cause it to be perceived as an indication of the commercial origin of those goods and services. It finally held that the trade mark applied for was devoid of any distinctive character, pursuant to Article 7(1)(b) of Regulation 2017/1001, for all the goods and services in question.
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      In support of its action, the applicant raises a single plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. That plea divides in essence into two parts, the first based on various errors in the interpretation and application of the judgment of 21 January 2010, Audi v OHIM (C‑398/08 P, ‘the Vorsprung durch Technik judgment’, EU:C:2010:29), and the second based on seven errors of assessment made in the present case.
11      As a preliminary point, the applicant claims that the sign applied for is a slogan (strapline) that is memorable and easy to remember since it acts as a ‘memory hook’, and is also original, non-descriptive and distinctive. It contends that, by reason of their mass exposure to straplines, the relevant public are conditioned to associate them with goods or services of particular undertakings. It is therefore necessary to start from the fact that the relevant public are likely to perceive a strapline as being a trade mark.
12      By the first part, the applicant claims that the Board of Appeal misinterpreted and misapplied the Vorsprung durch Technik judgment. In its view, that judgment is authority for the following three propositions when assessing the registrability of slogan marks under Article 7(l)(b) of Regulation 2017/1001: First, for the purposes of applying that article, it is irrelevant that a slogan is grammatically correct, conveys an objective message (however simple), is not a play on words, is not imaginative or surprising, or would be primarily understood as a promotional formula, since the test is whether the slogan is capable of acting as an indication of commercial origin. Secondly, given the first proposition, any reasoning of a court that, because a sign for which registration is sought is grammatically correct or conveys an objective message or is not imaginative or surprising or would be primarily understood as a promotional formula, it is incapable of acting as an indication of commercial origin is wrong in law. Thirdly, if a slogan shows a certain originality and resonance which makes it easy to remember, then that is likely to be sufficient (but not necessary) to overcome an objection under that article. Thus, the test resulting from that judgment is that a mark which is original and easy to remember is registrable. However, the contested decision refers back to ‘the old days’ preceding that judgment and shows ‘distaste’ (that is wrong in law) for the registration of straplines.
13      By the second part, the applicant complains that the Board of Appeal made seven errors of assessment in the present case, identified in paragraphs 39-44 below.
14      The applicant concludes that the trade mark applied for is in truth an example of a ‘21st century strapline’, that is to say, a phrase that does have a certain originality which makes it easy to remember for the relevant public, who are conditioned to see it as a brand. It is thus inherently registrable and not devoid of any distinctive character for the goods and services in question.
15      EUIPO disputes the applicant’s arguments.
16      Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered. Pursuant to Article 7(2) of that regulation, the provisions of Article 7(1) are to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.
17      Distinctive character within the meaning of Article 7(1)(b) of Regulation No 2017/1001 means that the mark applied for must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus distinguishing the goods or services from those of other undertakings (see judgment of
21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
18      Such a distinctive character 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 perception of the relevant public (see judgment of 29 April 2004, Henkel
v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
19      The notion of public interest underlying Article 7(1)(b) of Regulation 2017/1001 is indissociable from the essential function of a trade mark, namely that of ensuring that the consumer or the end user can identify the origin of the product or service concerned by allowing him to distinguish that product or service from those emanating from a different origin, without any risk of confusion (see, to that effect,
judgment of 29 April 2004, Henkel
v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 48).
20      Registration of a sign as an EU trademark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trademark. It suffices that the trademark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (judgment of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 41).
21      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 as such by virtue of such use (judgment of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41).
22      It follows that a trade mark consisting of such signs or indications must be regarded as being devoid of any 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 (see judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 17 and the case-law cited).
23      In the present case, in the first place, it should be noted that, as regards the relevant public, the Board of Appeal, in paragraphs 24 to 31 of the contested decision, found, in essence, that the relevant public was the English-speaking public of the Union, comprising in part the general public and in part
a specialist public with a high level of attention. There are no grounds to call that finding into question, and, moreover, it is not disputed by the applicant.
24      In the second place, as to the meaning of the sign applied for, it must be considered, first of all, that use of the word ‘delightful’ in this sign is not ‘awkward’,
contrary to the applicant’s claims. That word does not primarily refer to an ‘intense and
highly pleasurable and emotional experience’, as can be seen from the extract from the online Oxford dictionary provided by
EUIPO, according to which the first example of use of this adjective is, with a simple noun in agreement and without great emotion, ‘a delightful secluded garden’. Moreover, the expression ‘human environments’ in no way constitutes an ‘unusual duplication’ but merely emphasises that the goods and services in question have an application in a domestic setting. Furthermore, the sign applied for includes a simple and grammatically correct message, with a positive meaning, as accepted by the applicant.
25      Consequently, the Board of Appeal was correct when it held, in paragraphs 32 to 46 of the contested decision, that the expression ‘create delightful human environments’ had a clear, ordinary meaning in everyday language that did not conflict with the rules of English grammar, and carried the overall message that by purchasing goods and services such as those at issue the customer would enjoy the benefits promised, by using them to create pleasant and comfortable conditions in which to live.
26      In the third place, in relation to the distinctive character of the sign applied for in respect of the goods and services at issue, it must be held that, in accordance with its meaning, that sign will be solely perceived as a laudatory and promotional message compatible with the goods and services in question, highlighting positive connotations in connection with the perception of the relevant public. That slogan is a simple, direct and common way to state that the goods and services aim to create a pleasant human comfort standard indoors or to create a pleasant living space or living environment, in view of the fact that those goods and services are all aimed at controlling and adjusting indoor lighting. The relevant public will perceive the slogan solely as an informative message about those goods and services and will immediately establish a link between the slogan and the qualities, nature or purpose of the goods and services in question, without any particular interpretation or treatment. The sign applied for will not therefore be perceived as an indication of origin.
27      Contrary to the applicant’s assertions, the Board of Appeal’s finding that the sign applied for lacks distinctive character rests not only on the fact that it has a clear meaning and respects the rules of English syntax and grammar, but also that the semantic content of the slogan, indicating the intended purpose or purpose of the designated goods and services, aims to promote them and not to indicate their origin.
28      The Board of Appeal was therefore right — by means of a specific and careful examination of the distinctive character of the sign applied for in relation to each of the classes of goods and services in question, in paragraphs 47 to 60 of the contested decision, which should be confirmed, — to consider that the sign merely pointed out the positive aspects of those goods and services, namely creating a balance between natural light, heat, discoloration and harmful radiation, and that the relevant public would perceive that sign only as a laudatory and promotional message, designed to highlight positive aspects of those goods and services.
29      The Board of Appeal was also correct in holding, in paragraphs 61 to 65 and 73 to 76 of the contested decision, first of all that the sign applied for as a whole did not possess any factors that might, beyond its obvious laudatory meaning, enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods and services at issue, whether they are a specialised public or the general public, and then found that that simple promotional slogan, which did not require any effort of interpretation and did not set off a cognitive process in the minds of the relevant public, did not possess anything that would
be likely to be perceived as an indication of the commercial origin of those goods and services, and finally concluded that the trade mark applied for was devoid of any distinctive character under Article 7(1)(b) of Regulation 2017/1001 in respect of all the goods and services in question.
30      That finding is not called into question by the applicant’s arguments.
31      As regards the first part of the single plea, that the Board of Appeal made an incorrect interpretation and application of the Vorsprung durch Technik judgment, it must be pointed out at the outset, in a similar way as EUIPO did, that there is neither in that judgment nor in any of the earlier or subsequent case-law, any basis to support the
argument that any promotional expression could now be more easily registered as a trade mark by a more favourable analysis of its distinctive character merely on the ground that it is a slogan which would allegedly be ‘conditioned’ by the relevant public. The relevant test for assessing the distinctive character of a trade mark, irrespective of its type, is that of a sign’s capacity to fulfil the essential function of a trade mark, to inform the relevant public of the origin of the goods and services in question.
32      Although, in the Vorsprung durch Technik judgment, the Court of Justice had the opportunity to point out, with regard to the assessment of the distinctive character of slogans, that there should be no need to apply to them criteria which are stricter than those applicable to other signs (see the Vorsprung durch Technik judgment, paragraph 36 and the case-law cited), it nevertheless considered that slogans should benefit from more flexible criteria in the assessment of their distinctive character.
Similarly, the Court has held that the criteria for assessing marks such as the one at issue were neither stricter nor more flexible than those applicable to other categories of mark (see, to that effect, judgment of 29 January 2015, Blackrock
v OHIM (SO WHAT DO I DO WITH MY MONEY), T‑609/13, not published, EU:T:2015:54, paragraph 46).
Accordingly, the fact that a sign is a slogan does not give grounds for assuming that it has a distinctive character, neither in law,
nor in fact.
33      The applicant also claims that the Vorsprung durch Technik
judgment should be interpreted as meaning that, first, the fact that a slogan is grammatically correct, conveys an objective and simple message, that it is not a play on words, that it is not imaginative or surprising, or that it will be understood at first glance as a promotional formula, is not sufficient for registration to be refused and, second, it is sufficient if a slogan is original and easy to remember when it has distinctive character.
34      It must be borne in mind, as EUIPO states, that, although it follows from the Vorsprung durch Technik judgment that the originality and easy memorable nature of a slogan may constitute relevant factors in determining whether a sign is capable of designating the commercial origin of the goods and services in question, other factors may also be taken into account such as the required effort or setting off a cognitive process (see paragraphs 57 and 59 of that judgment). In that judgment, the Court concluded, in that case, that the slogan in question, on account of the fact that it exhibited a certain originality and resonance, was memorable. In contrast, the Court has not established a new test according to which the originality and memorable nature of a sign are sufficient to establish the distinctive character of a trade mark.
35      In that regard, it must be pointed out that, in the context of trade mark law, the originality of a sign cannot refer to, as in the context of the protection of a work by copyright (judgments of 16 July 2009, Infopaq International,
C‑5/08, EU:C:2009:465; of 1 December 2011, Painer, C‑145/10, EU:C:2011:798 and
of 12 September 2019, Cofemel,
C‑683/17, EU:C:2019:721), to the author’s proper intellectual creation as such. A trade mark right constitutes a right of use and not creation, in such a way that the original or creative aspect of a sign must be assessed, not for itself, but rather for its effect on the perception of the distinctive character of that sign in the minds of the relevant public (judgment of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, EU:T:2013:303, paragraph 23).
36      Therefore, the Board of Appeal was correct to hold, in paragraph 61 of the contested decision, that although the case-law of the Court clarifies certain questions relating to the acceptability of slogans as trade marks, that case-law cannot and should not be read as suggesting that any promotional phrase can now be registered as a trade mark merely because it is presented in the form of an advertising slogan.
37      Since the Board of Appeal’s interpretation of the Vorsprung durch Technik judgment was free of error, the first part of the single plea cannot succeed.
38      It is now necessary to examine, in turn, the seven complaints under the second part of the single plea in law, based on errors of assessment committed in the present case.
39      As regards the first complaint, according to which there is no difference in nature between the expression ‘Vorsprung durch Technik’ for which distinctive character has been recognised, and the expression ‘create delightful human environments’, the two including a simple, objective and grammatically correct message, suffice it to state that the factual context of the case which gave rise to the Vorsprung durch Technik judgment differs substantially to that in the present case (see, by analogy, judgment of 19 November 2009, Agencja Wydawnicza Technopol v OHIM (1000),
T‑298/06, not published, EU:T:2009:449, paragraph 34), in particular by the fact that the slogan ‘Vorsprung durch Technik’ was, according to the Court,
‘widely known and used by Audi for many years’ to promote the sale of its motor vehicles in Class 12 (see, to that effect, judgment Vorsprung durch Technik, paragraphs 53 and 59), whereas, in the present case,
such a fact has not been either established or claimed by the applicant as regards the sign applied for.
The slogan ‘Vorsprung durch Technik’ differs also from the sign applied for by its level of originality or resonance, and by the intensity of interpretative effort required or the cognitive process started, in the relevant public, in order to understand it (see, to that effect, judgment Vorsprung durch Technik,
paragraphs 57 to 59). The substantial difference between the case giving rise to the ‘Vorsprung durch Technik’ judgment and the present case, in view of their respective factual frameworks and the slogans in question, does not, therefore, enable the Court to recognise distinctive character with regard to the sign applied for (see, to that effect and by analogy, judgment of 6 June 2013, Inspired by efficiency, T‑126/12, not published, EU:T:2013:303, paragraph 43).
The first complaint must therefore in any event be rejected.
40      As regards the seventh complaint, connected with the first, according to which
the Board of Appeal wrongly distinguished the case in the Vorsprung durch Technik judgment on the ground that that case concerned a mark which acquired distinctive character through use, whereas the recognition of the distinctive character of the expression ‘Vorsprung durch Technik’ as a trade mark was based on its inherent distinctive character and not acquired through use, it must be noted, on the contrary, that that slogan was deemed to be distinctive for the goods and services designated, on the basis, inter alia, of its distinctive character acquired through long-standing use as a slogan promoting the sale of cars. Accordingly, the Court declared that, inasmuch as it was a widely known slogan which has been used by Audi for many years, it could not be excluded that the fact that members of the relevant public were used to establishing the link between that slogan and the motor vehicles manufactured by that company also made it easier for that public to identify the commercial origin of the goods or services in question (see, to that effect, the Vorsprung durch Technik judgment, paragraph 59). The fact that that use and recognition concerned the goods in Class 12 did not prevent the Court from taking into account for the purposes of the evaluation of the intrinsic distinctive character of all of the designated goods and services from various classes, other than the vehicles in Class 12.
The seventh complaint must therefore in any event be rejected.
41      As to the second complaint, that the sign applied for shows a certain originality and resonance which would make it easily memorable, it must be considered, on the contrary, that the expression ‘create delightful human environments’ does not possess any aspect that might enable the relevant public to memorise that sign easily and immediately as a distinctive trade mark for the goods and services concerned. Since the slogan in question has a clear and simple meaning that alludes to the creation of a pleasant interior due to the goods and services that it covers, it will exclusively be perceived by the relevant public as a laudatory message and a mere promotional formula, without any interpretation effort being required, and not as an indication of the commercial origin of those goods and services. Moreover, while it is true that a slogan does not necessarily have to be fanciful in order to be distinctive, the fact remains that the lack of fancifulness, without being decisive as a necessary condition, must be taken into account as a factor when assessing the distinctive character of a slogan, as done by the Board of Appeal. The fourth complaint must therefore be rejected.
42      As to the third and fifth complaints, which must be examined together and according to which the Board of Appeal, first, based its reasoning on the fact that the sign applied for conveys a positive message, and therefore is merely laudatory and promotional, and, second, merely inferred the lack of distinctive character of that sign from the fact that that sign is grammatically correct and that it has a clear laudatory meaning, without justifying its conclusion that the sign applied for is merely promotional and cannot be perceived as an indication of origin, it must be considered, unlike both the applicant’s and EUIPO’s view, that the Board made a comprehensive and in-depth assessment of the distinctive character of the sign applied for and that its conclusion is based on a combination of factors which, combined, do not allow for that sign to be perceived as an indication of origin. Those factors, examined in conjunction in the overall assessment of the sign applied for, include, in particular, the fact that the slogan in question has a clear and ordinary meaning in everyday language and is not contradictory to the rules of English grammar (paragraph 35 of the contested decision); the fact that the slogan indicates a characteristic of the goods and services in question (paragraphs 38, 39 and 45 of that decision); the fact that the slogan is not a play on words and cannot be perceived as being fanciful, surprising and unexpected (paragraph 40 of that decision); by the fact that the public will perceive the slogan as a mere promotional laudatory message serving only to highlight positive aspects of those goods and services (paragraphs 41 to 43 of that decision) and the fact that there is nothing about the expression ‘create delightful human environments’, as a whole, will enable the relevant public to memorise easily and immediately the sign as a distinctive trade mark for those goods and services (paragraph 59 of that decision). Those complaints therefore lack factual basis and must be disregarded.
43      As regards the fourth complaint, according to which the fact that the sign applied for is prima facie perceived as information of a promotional nature on the characteristics of the goods and services concerned by it is not sufficient to form the basis of a refusal to register, it must be observed that, although it is certainly true that the mere fact that a mark be above all perceived by the relevant public as a promotional formula does not suffice, in itself, to conclude that that mark is devoid of distinctive character, so that a non-descriptive slogan expressing an objective message may be capable of indicating commercial origin, the fact remains that, in the present case, the Board of Appeal’s assessment is founded on the basis of the case-law according to which a mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived immediately by the relevant public as a mere promotional formula, that is to say only, and not, beyond its promotional function, as an indication of origin (see paragraph 22 above). The fourth complaint must therefore be rejected.
44      Finally, as to the sixth complaint that the Board of Appeal failed to take into account the alleged ‘well-known fact’ that the public is accustomed, or even ‘conditioned’, to the use as marks of promotional slogans which are grammatically correct and have a clear laudatory meaning, it is sufficient to note that the applicant failed to substantiate in any evidence the existence of such a claimed approach, which in any case cannot be a well-known fact. Furthermore, the argument that any promotional formula could now be more easily registered as a trade mark by a more favourable analysis of its distinctive character on the mere ground that it is a slogan to which the relevant public is allegedly ‘conditioned’ is clearly at odds with the case-law cited in paragraphs 31 and 32 above. The sixth complaint must therefore also be dismissed.
45      Having regard to all of the foregoing, the second part of the single plea in law must be rejected and, therefore, the action in its entirety must be dismissed.
Costs
46      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 the costs of the proceedings, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders View, Inc. to pay the costs.
Costeira
Kancheva
Berke
Delivered in open court in Luxembourg on 13 May 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.