JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
12 July 2019
(*)
(EU trade mark — Application for EU word mark FREE — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑114/18,
Miles-Bramwell Executive Services Ltd, established in Alfreton (United Kingdom), represented initially by J. Mellor QC, G. Parsons and A. Zapalowski, Solicitors, and subsequently by J. Mellor, G. Parsons and F. McConnell, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 November 2017 (Case R 2166/2016-1), relating to an application for registration of the word sign FREE as an EU trade mark,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 22 February 2018,
having regard to the response lodged at the Court Registry on 21 June 2018,
having regard to the decision of 12 February 2019 joining Cases T‑113/18 and T‑114/18 for the purposes of the oral part of the procedure,
further to the hearing on 9 April 2019,
gives the following
Judgment
Background to the dispute
1        On 5 February 2016, the applicant, Miles-Bramwell Executive Services Ltd, 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), as amended (replaced by 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 word sign FREE.
3        The goods for which registration was sought, the full list of which is reproduced in paragraph 1 of the decision of the First Board of Appeal of EUIPO of 27 November 2017 (Case R 2166/2016-1) (‘the contested decision’), are in Classes 29 to 33 within the meaning 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. The goods covered by the mark applied for include food and beverages.
4        By decision of 22 February 2016, the EUIPO examiner provisionally refused registration of the mark applied for in respect of the goods referred to in paragraph 3 above on the ground that such registration was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 7(2) of that regulation (now Article 7(2) of Regulation 2017/1001).
5        By decision of 28 July 2016, the examiner rejected the application for registration in full, on the basis of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009, on the ground that the mark applied for was descriptive and devoid of distinctive character. In particular, the examiner considered, in essence, that the consumer would immediately understand that the goods covered by the mark applied for were offered free of charge in order to promote the applicant’s range of goods and services.
6        On 24 November 2016, the applicant filed a notice of appeal against the examiner’s decision to reject the application for registration. The applicant filed its statement of grounds of appeal on 30 January 2017. In its statement, the applicant included a request to restrict the list of goods covered by the mark applied for.
7        By the contested decision, the First Board of Appeal of EUIPO dismissed the appeal, after having rejected the request to restrict the list of goods covered.
8        In the first place, the Board of Appeal defined the relevant public as the English-speaking public of the European Union, including the public having a sufficient knowledge of English. Furthermore, the Board of Appeal considered that the public targeted by the goods designated by the mark was the average consumer, who is reasonably well informed and reasonably observant and circumspect, given that the goods applied for are for everyday consumption.
9        In the second place, the Board of Appeal considered that the word ‘free’ meant ‘immune from, not subject to or affected by (something regarded as harmful or undesirable)’ or ‘clear of something which is regarded as objectionable or problematic. With of, from’.
10      In the third place, according to the Board of Appeal, the word ‘free’ is a generic term in the market to designate food and beverages and, in particular, to indicate that they are free from one or several harmful or undesirable constituents, whatever that substance or ingredient might be. The mark applied for is descriptive of the goods that it designates and that finding would not be called in question even if the applicant’s request to restrict the list of goods covered were to be admissible.
11      In the fourth place, the Board of Appeal noted that, given that the mark applied for was descriptive, it was also devoid of distinctive character. In any event, the mark applied for conveys an exclusively promotional message and has a laudatory meaning. Moreover, it does not contain any element which may be considered to be distinctive and it cannot be used to identify the commercial origin of the goods it covers despite the lack of information on the absent substance or ingredient.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 and, second, infringement of Article 7(1)(b) of that regulation.
15      The Court considers first the second plea in law.
Second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
16      In the context of the second of plea in law, the applicant contests the relevance of the meaning of the mark applied for accepted by the Board of Appeal. It also disputes the Board of Appeal’s statement that the mark applied for is devoid of distinctive character and incapable of performing the essential function of a mark, namely identifying the commercial origin of the goods that it designates. Moreover, the applicant claims that the Board of Appeal could not consider that the mark applied for was devoid of distinctive character on the basis of the erroneous conclusion that that mark was descriptive.
17      EUIPO disputes the applicant’s arguments.
18      In the present case, it must be recalled that, under Article 7(1)(b) of Regulation 2017/1001, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Furthermore, Article 7(2) of that regulation provides that Article 7(1) applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
19      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation 2017/1001 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 in question, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 12 and the case-law cited).
20      Article 7(1)(b) of Regulation 2017/1001 covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, judgment of 12 November 2015, Orthogen v OHIM — Arthrex (IRAP), T‑253/13, not published, EU:T:2015:843, paragraph 45).
21      It must also be recalled that each of the grounds for refusal to register listed in Article 7(1) of Regulation 2017/1001 is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue (judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraphs 45 and 46).
22      In that regard, 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, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34, and of 9 September 2010, OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 32).
23      Thus, a trade mark consisting of a promotional formula or an indication of quality 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 (judgments of 17 September 2015, COMPETITION, T‑550/14, EU:T:2015:640, paragraph 17, and of 9 October 2018, De Longhi Benelux v EUIPO (COOKING CHEF GOURMET), T‑697/17, not published, EU:T:2018:661, paragraph 33).
24      It is in the light of those principles that the second plea in law raised in the present action must be considered.
The relevant public
25      Since the word ‘free’ is an English word, there is no need to question the Board of Appeal’s finding, which the applicant does not contest, that the relevant public is composed of the English-speaking public of the European Union, including the public having a sufficient knowledge of English. The same is true of the Board of Appeal’s finding in the contested decision, also not disputed, as regards the level of attention of the relevant public. The Board of Appeal considered that the public targeted by the goods was the average consumer, who is reasonably well informed and reasonably observant and circumspect, given that the goods designated by the mark applied for are for everyday consumption.
Meaning of the mark applied for
26      The Board of Appeal, by relying on the Oxford English Dictionary, considered that the mark applied for meant ‘immune from, not subject to or affected by (something regarded as harmful or undesirable)’ or ‘clear of something which is regarded as objectionable or problematic. With of, from’.
27      The applicant observes that the online version of the Oxford English Dictionary contains a very wide variety of meanings for the word ‘free’. In its opinion, the meaning of the mark applied for is dictated by the context in which the word ‘free’ is used.
28      The applicant does not dispute the meanings accepted by the Board of Appeal and it adds that they are correct because they appear in the dictionary in question. However, it submits that those meanings are not those of the word ‘free’ used on its own. Rather those are the meanings of a compound expression with the prepositions ‘of, from’.
29      In the present case, as the applicant concedes, the meanings accepted by the Board of Appeal appear in the Oxford English Dictionary. Those meanings are not called in question by the fact that they involve the use of the preposition ‘of’ or ‘from’. As the Board of Appeal correctly found, those meanings overlap and imply, inter alia, that the goods covered are free from undesirable or harmful constituents.
30      Moreover, as regards the applicant’s argument that the word ‘free’ has a very wide variety of meanings, it should be recalled that the fact that the mark applied for may have other meanings does not preclude the application of the absolute ground for refusal provided for in Article 7(1)(b) of Regulation 2017/1001. According to case-law, a word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 25 April 2013, Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, not published, EU:T:2013:220, paragraph 34 and the case-law cited). Therefore, the possible very wide variety of meanings of the word ‘free’ cannot call in question the validity of the meaning accepted by the Board of Appeal.
31      Consequently, it must be held that the contested decision is not vitiated by error as regards the meaning of the word ‘free’.
Distinctive character of the mark applied for
32      As regards the distinctive character of the mark applied for, in the first place, the Board of Appeal considered that, in essence, in view of the fact that the mark applied for was descriptive, it was also devoid of distinctive character. In the second place, the Board of Appeal set out its own reasoning regarding the application of Article 7(1)(b) of Regulation 2017/1001 in the present case.
33      The Court examines first of all the autonomous ground relating to the distinctive character of the mark applied for.
34      It must be recalled that, as is apparent from the case-law cited in paragraph 21 above, even if the Board of Appeal had erred in its analysis of the descriptive character of the mark applied for, the specific examination of the distinctive character of that mark based on considerations which are particular to it would not be affected.
35      In that regard, according to the Board of Appeal, the mark applied for conveys a promotional message and has a clear laudatory meaning because it indicates to the consumer a positive characteristic, namely that the goods covered are free from undesirable or harmful constituents. In addition, the word ‘free’ is a generic term in the market for food and beverages in general.
36      Therefore, the mark applied for is devoid of any distinctive character and is not capable of performing the essential function of a trade mark, namely of identifying the commercial origin of the goods that it designates.
37      First, the applicant does not dispute the Board of Appeal’s rejection of its request to restrict the list of goods covered.
38      Second, the applicant claims that the promotional meaning of the mark applied for is not clear. In its opinion, the Board of Appeal’s assessment is wrong since, in the mark applied for, the key characteristic, that is to say the characteristic related to the absence of undesirable or harmful constituents, is not indicated.
39      Third, the applicant maintains that the case-law cited in paragraph 43 of the contested decision, namely the judgment of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) (T‑281/02, EU:T:2004:198, paragraph 31), is not relevant in the present case. By contrast, it takes the view that the judgments of 19 April 2007, OHIM v Celltech (C‑273/05 P, EU:C:2007:224), and of 14 April 2005, Celltech v OHIM (CELLTECH) (T‑260/03, EU:T:2005:130), as well as national case-law are applicable in the present case.
40      Fourth, the applicant disputes the Board of Appeal’s statement that the mark applied for is incapable of identifying the commercial origin of the goods that it designates. In that context, it states that, in the United Kingdom, as well as at EU level, it is the proprietor of the mark FREE which is used to denote foods which subscribers to its range of Slimming World goods may eat as part of weight loss and weight control programmes. The applicant adds that the distinctive character of the mark FREE used in the United Kingdom has been significantly enhanced by use.
41      EUIPO disputes the applicant’s arguments.
42      The applicant’s arguments cannot call in question the meaning of the mark applied for accepted by the Board of Appeal which, as has been concluded in paragraph 31 above, contains no error.
43      The applicant also accepts that expressions such as ‘sugar-free’, ‘alcohol-free’ or ‘fat-free’ are generally used in relation to the goods covered even though, on its own, the word ‘free’ is intriguing and unusual in relation to those goods and services.
44      Furthermore, as regards the goods concerned, it must be pointed out, as the Board of Appeal did, that they cover food and beverages and the word ‘free’ is generally used in English for such goods which are characterised by the absence of certain ingredients or constituents which may be incompatible with the consumers’ dietary objectives. In addition, the parties agree that, in the case of food and beverages, consumers are accustomed to seeing and interpreting the inclusion of the word ‘free’, often used in that field, as being related in particular to the absence of one or several constituents.
45      It follows that the word ‘free’ is commonly used, in particular in the food sector. The Board of Appeal therefore made no error in considering that the word ‘free’ is a generic term in the field of the goods covered.
46      Consequently, in accordance with the case-law cited in paragraph 20 above and given the common use of the word ‘free’ in the field of the goods covered, the mark applied for is not capable of distinguishing the goods that it designates from those of other undertakings.
47      It must also be added that the applicant relies on its marks FREE registered in the United Kingdom, as well as at EU level. In that regard, the applicant accepts that those marks indicate to the relevant public that the foods marketed under those marks are compatible with a weight loss or weight control programme. The fact remains that the applicant’s argument reinforces the conclusion regarding the laudatory and promotional nature of the mark applied for.
48      In the light of the foregoing, it must be found that, given the common use of the word ‘free’ in the field of food and beverages, the mark applied for will be perceived as conveying a promotional and laudatory message, since it merely contains the promise, without giving any other information, that the goods it covers are free from certain ingredients or constituents. In that field, it involves a promise that relates to the market value of the goods covered, which, without the absent ingredient or constituent being specified, comes from promotional information that the public will perceive as such (see, to that effect, judgment of 25 September 2018, Medisana v EUIPO (happy life),
T‑457/17, not published, EU:T:2018:599, paragraph 35).
49      Accordingly, the Board of Appeal did not err in finding that the mark applied for is devoid of distinctive character.
50      That conclusion cannot be called in question by the applicant’s other arguments referred to in paragraphs 39 and 40 above.
51      As regards the argument that the distinctive character of the mark used in the United Kingdom has been significantly enhanced by use, it cannot succeed.
52      In that regard, it must be noted, as EUIPO did, that, assuming that such an argument relates to the mark applied for, it is incumbent on the applicant relying on the distinctive character of the mark applied for to provide specific and substantive evidence that the mark applied for has distinctive character acquired by use. The applicant must show, in the first place, the extent of use of its mark and, in the second place, the impact that that use had on its distinctiveness. The distinctiveness acquired by use of a mark cannot be established solely by reference to general, abstract data (see judgment of 30 November 2017, Hanso Holding v EUIPO (REAL), T‑798/16, not published, EU:T:2017:854, paragraphs 42, 44 and 45 and the case-law cited). The applicant has adduced no evidence capable of supporting its claim.
53      Furthermore, the applicant’s argument relating to the judgments of 19 April 2007, OHIM v Celltech (C‑273/05 P, EU:C:2007:224), and of 14 April 2005, CELLTECH (T‑260/03, EU:T:2005:130), cannot be accepted.
54      In that regard, it is sufficient to note that that case-law relates to a specific examination of the descriptive nature of the word ‘celltech’. That is clear from paragraph 26 of the judgment of 14 April 2005, CELLTECH (T‑260/03, EU:T:2005:130). Consequently, that case-law is not relevant in the context of the present plea in law.
55      The same is true as regards the decision of the trade mark appeal body in the United Kingdom, relied on by the applicant. It is apparent from settled case-law that the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature and not on the basis of national case-law (judgments of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 38, and of 16 January 2019, Windspiel Manufaktur v EUIPO (Representation of the position of a bottle closure), T‑489/17, not published, EU:T:2019:9, paragraph 41).
56      Therefore, since all of the applicant’s arguments have been rejected, it must be concluded that the applicant has not successfully challenged the legality of the contested decision as regards the analysis of the distinctive character of the mark applied for.
57      Therefore, the second plea in law must be rejected.
First plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
58      The applicant claims that the mark applied for is not descriptive of the goods that it designates.
59      EUIPO disputes the applicant’s arguments.
60      It should be noted, as is clear from Article 7(1) of Regulation 2017/1001, that it is sufficient that one of the absolute grounds for refusal applies for the sign not to be registrable as an EU trade mark (judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:C:2015:752, paragraph 74).
61      Consequently, since, as is apparent from paragraph 49 above, the Board of Appeal was correct to find that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it is not necessary, in the present case, to examine whether the first plea in law, alleging infringement of Article 7(1)(c) of that regulation, is well founded (see, by analogy, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).
62      In the light of the foregoing, there is also no need to rule on the applicant’s argument according to which EUIPO relied on, before the Court, a new argument concerning the meaning of the mark applied for as referring to something offered free of charge, although that meaning was not part of the reasoning of the contested decision.
63      Therefore, in the light of the foregoing considerations, the action must be dismissed in its entirety.
Costs
64      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 bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Miles-Bramwell Executive Services Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).
Kanninen
Calvo-Sotelo Ibáñez-Martín
Reine
Delivered in open court in Luxembourg on 12 July 2019.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.