JUDGMENT OF THE GENERAL COURT (Second Chamber)
21 January 2015 (*)
(Community trade mark — Application for Community word mark Pianissimo — Mark consisting of an advertising slogan — Absolute ground for refusal — Absence of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Equal treatment)
In Case T‑11/14,
Grundig Multimedia AG, established in Stansstad (Switzerland), represented by S. Walter, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Bonne and A. Folliard-Monguiral, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 November 2013 (Case R 441/2013-4), confirming rejection of the application for registration of the word sign Pianissimo as a Community trade mark,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 January 2014,
having regard to the response lodged at the Court Registry on 6 March 2014,
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,
gives the following
Judgment
Background to the dispute
1        By an application filed at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 7 August 2012, Grundig Multimedia BV sought registration of the word mark Pianissimo as a Community trade mark.
2        The products in respect of which registration was sought are in Class 7 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Engines, electrical engines, their parts and fittings and accessories other than for land vehicles (including parts), electric door openers-closers used in land vehicles (included in this class); alternators, generators, generators of electricity, generators working with solar energy; machines for manufacturing, treating, scotching, tentering or washing fabrics, sewing machines and industrial robots with the same function as the above-mentioned machines; pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry machines/dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts’.
3        The examiner rejected the application by decision of 9 January 2013. The rejection was based on Article 7(1)(b) and Article 7(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
4        On 19 February 2013, the transfer of the application for a Community trade mark between Grundig Multimedia BV and the applicant, Grundig Multimedia AG, was registered by OHIM.
5        On 5 March 2013, the applicant appealed against the decision of 9 January 2013.
6        By decision of 5 November 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal, holding that the trade mark applied for was devoid of distinctive character.
7        The Board of Appeal relied, in essence, on the following arguments: the goods concerned are aimed at a professional public and the general public and the public’s level of attention, whether it be the professional public or the general public, is relatively low when it comes to promotional indications (paragraph 9 of the contested decision); the relevant public consists of Italian consumers (paragraph 10 of the contested decision); the trade mark consists of one word, the word ‘pianissimo’, which is the superlative of the Italian adjective ‘piano’; one of the meanings of the word ‘piano’ is ‘noiseless’ or ‘without making a noise’, according to the examiner’s translation of the definition given by the Italian dictionary Treccani; it follows that, for the Italian public, one of the meanings of the word ‘pianissimo’ is ‘extremely silent’ (paragraph 11 of the contested decision); given that the goods designated by the trade mark applied for are engines, machines and different electrical devices, inter alia household devices, which produce noise, sometimes a high level of noise when they are in operation, consumers, where they are confronted with the word ‘pianissimo’ attached to those goods, will not perceive that word as an indication of their origin, but as a promotional and laudatory message informing them of the fact that those goods produce little or no noise, or that they run extremely silently (paragraph 12 of the contested decision).
8        The Board of Appeal added that a word sign must be refused registration under Article 7(1)(b) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (paragraph 15 of the contested decision).
9        The Board of Appeal also stated that the applicant’s argument based on the registration by OHIM of the earlier trade marks ‘pianissimo’ was not capable of changing its assessment. Also according to the Board of Appeal, respect for the principle of equal treatment must be reconciled with the principle of legality, according to which a person may not rely, in support of his claim, on an unlawful act committed in favour of a third party (paragraph 16).
10      The Board of Appeal held that the trade mark applied for was devoid of distinctive character as required under Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs, including those incurred before the Board of Appeal.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
14      Under Article 7(1)(b) of Regulation No 207/2009 trade marks which are devoid of any distinctive character are to be refused registration.
15      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 for which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from the goods of other undertakings (see the 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).
16      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, second, by reference to the perception of the relevant public (see the judgment in Freixenet v OHIM, paragraph 15 above, EU:C:2011:680, paragraph 43 and the case-law cited).
17      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 (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).
18      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 slogans criteria which are stricter than those applicable to other types of sign (judgments in OHIM v Erpo Möbelwerk, paragraph 17 above, EU:C:2004:645, paragraphs 32 and 44, and Audi v OHIM, paragraph 17 above, EU:C:2010:29, paragraph 36).
19      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 Audi v OHIM, paragraph 17 above, EU:C:2010:29, paragraph 39, and OHIM v Erpo Möbelwerk, paragraph 17 above, EU:C:2004:645, paragraphs 31 and 32).
20      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 (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).
21      In the present case, the applicant disputes the fact that the word ‘pianissimo’ can be regarded as an advertising slogan. It states that that word is known by the average consumer in so far as it refers to the sound level of a piece of music and that the consumer will associate it with music, particularly with classical music. It adds that that word means also ‘very slow’, a meaning which cannot be classified as laudatory in respect of machines or apparatus.
22      In that regard, it should first of all be stated that the Board of Appeal correctly identified the Italian-speaking public, whether the general public or the professional public, as the relevant public.
23      Next, it should be noted that the trade mark applied for consists of only one word, common in Italian, the word ‘pianissimo’, one of the meanings of which is ‘extremely silent’ or refers, at the very least, to a very low sound volume.
24      In the light of the characteristics of the products designated by the trade mark applied for, the use of which is associated with noise, the word ‘pianissimo’, in its meaning stated above, will be perceived by the relevant public as a promotional formula indicating that those products function silently.
25      In addition, the message is thereby expressed so clearly and obviously that the relevant public will not need to make a special effort to interpret it.
26      As a result, the Board of Appeal was correct to hold, in the light of that meaning of the word ‘pianissimo’, that the sign at issue will not be immediately perceived by the relevant public as an indication of the commercial origin of the goods referred to, but as the description of one of their characteristics (see, to that effect, the judgment in Audi v OHIM, paragraph 17 above, EU:C:2010:29, paragraph 59).
27      Furthermore, it should be recalled that a word sign must be refused registration, under Article 7(1)(b) of Regulation No 207/2009, where, according to at least one of its possible meanings, it designates a characteristic of the products or services concerned (see judgments of 27 June 2013 in International Engine Intellectual Property Company v OHIM (PURE POWER), T‑248/11, EU:T:2013:333, paragraph 28 and the case-law cited, and 23 January 2014 in Novartis v OHIM (CARE TO CARE), T‑68/13, EU:T:2014:29, paragraph 41 and the case-law cited).
28      The word ‘pianissimo’, in its meaning accepted by the Board of Appeal referring to a very low sound volume, refers to one of the characteristics of the goods designated by the trade mark applied for, since, as has already been stated, the use of those goods is associated with noise. As a result, the fact that the word ‘pianissimo’ means also ‘very slowly’, a meaning which the Board of Appeal did not take into consideration, is of no benefit to the applicant.
29      In any event, it is not apparent from the documents in the file that the other meanings of the word ‘pianissimo’ on which the applicant relies are, for the relevant public, in the light, in particular, of the characteristics of the goods at issue, more important than the meaning on which the Board of Appeal’s arguments are based. In particular, although the use of the goods at issue implies some movement, it is movement which does not involve displacement of those goods or which involves, at most, only a limited displacement of those goods. Accordingly, the meaning of the word ‘pianissimo’ referring to the idea of slowness will be secondary in relation to that referring to sound volume. In addition, the fact that the word ‘pianissimo’ refers to the world of music, relied upon by the applicant, increases still further the greater importance of the meaning referring to sound volume; that does not call into question the perception of that word as a mere promotional formula, and indeed, in the light of the positive features commonly associated with music, it strengthens that perception.
30      The Board of Appeal was therefore correct to hold that the trade mark applied for did not have the distinctive character required under Article 7(1)(b) of Regulation No 207/2009.
31      The above finding is not called into question by the other complaints essentially raised by the applicant.
32      In the first place, the applicant submits that the Board of Appeal was wrong to state, in the contested decision, that it was Grundig Multimedia AG, and not Grundig Multimedia BV, which had filed the application for registration of the trade mark at issue.
33      That factual inaccuracy, which is acknowledged by OHIM, cannot however lead to the annulment of the contested decision, because it does not relate to an element constituting the basis for the operative part of that decision.
34      In the second place, the applicant complains that the Board of Appeal failed to take account of its arguments relating to the absence, in the examiner’s decision, of a translation of a quotation given in Italian and of information regarding the origin of that quotation. It also complains that the Board of Appeal failed to inform it, in the contested decision, of the link to the Internet website from which that quotation was taken and to have referred to that website although it was in Italian, which was not the language of the proceedings before the Board of Appeal.
35      Those arguments are, however, not capable of establishing that the Board of Appeal infringed the applicable procedure or that the applicant was not able to assert its rights before it. The applicant had every opportunity, during the procedure before OHIM, to attempt to establish the distinctive character of the word ‘pianissimo’ in the light of the goods for which registration had been sought and the perception which the relevant public could have of them.
36      In the third place, the applicant considers that the Board of Appeal infringed the principle of equal treatment by refusing to register the trade mark applied for, although it agreed to register identical trade marks.
37      In the light of the principles of equal treatment and of good administration, it has indeed been held that OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 74).
38      However, those principles must be reconciled with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment in Agencja Wydawnicza Technopol v OHIM, paragraph 37 above, EU:C:2011:139, paragraphs 75 and 76).
39      Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment in Agencja Wydawnicza Technopol v OHIM, paragraph 37 above, EU:C:2011:139, paragraph 77).
40      In this case, it is apparent from the contested decision that the Board of Appeal undertook a full and specific examination of the trade mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other complaints that that examination led the Board of Appeal to find, correctly, that the absolute ground for refusal to register referred to in Article 7(1)(b) of Regulation No 207/2009 existed and thus precluded the registration of the trade mark applied for. Since the examination of the trade mark at issue in the light of that provision could not, in itself, lead to a different conclusion, the applicant’s claims of a failure to take into consideration the registration of identical marks cannot succeed. In order to cast doubt on the conclusion that the registration of the trade mark applied for is incompatible with Regulation No 207/2009, the applicant may thus not properly rely on a previous decision of OHIM.
41      In the fourth place, the applicant contends that, for the vast majority of the European public, the word ‘pianissimo’ will, at most, be associated with classical music and will have at least a certain degree of distinctive character.
42      However, it should be noted that, in accordance with Article 1(2) of Regulation No 207/2009, a Community trade mark has a ‘unitary character’, which implies that it has ‘equal effect throughout the Community’. It follows from the unitary character of the Community trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union. Thus, according to Article 7(2) of Regulation No 207/2009, a trade mark must be refused registration where it is devoid of distinctive character in part of the European Union (judgment of 30 March 2000 in Ford Motor v OHIM (OPTIONS), T‑91/99, ECR, EU:T:2000:95, paragraphs 23 to 25). The part of the European Union referred to in Article 7(2) may be comprised of a single Member State (judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraph 83).
43      It follows, moreover, from the unitary character of the Community trade mark that, in order to be accepted for registration, a sign must have distinctive character, inherent or acquired through use, throughout the European Union. It would be paradoxical to acknowledge, on the one hand, under Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), that a Member State is obliged to refuse to register as a national trade mark a sign devoid of distinctive character in its territory and, on the other hand, that that State is obliged to respect a Community trade mark relating to that same sign on the sole ground that it has distinctive character in the territory of another Member State (judgment of 14 December 2011 in Vuitton Malletier v OHIM — Friis Group International (Representation of a locking device), T‑237/10, EU:T:2011:741, paragraph 100).
44      Accordingly, the applicant’s argument must be rejected.
45      It follows from all the foregoing that the action must be dismissed.
Costs
46      Under Article 87(2) 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, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Grundig Multimedia AG to pay the costs.
Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 21 January 2015.
[Signatures]
* Language of the case: English.