62003TO0061_EN
Parties
Grounds
Decision on costs
Operative part
Parties
In Case T-61/03,
Irwin Industrial Tool Co.,
established in Hoffman Estates, Illinois (United States), represented by G. Farrington, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by G. Humphreys and S. Laitinen, acting as Agents,
defendant,
ACTION brought against the decision of the Third Board of Appeal of OHIM of 20 November 2002 (Case R 110/2002-3) refusing to register the word mark QUICK-GRIP as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of: H. Legal, President, V. Tiili and M. Vilaras, Judges,
Registrar: H. Jung,
having regard to the application lodged at the Registry of the Court of First Instance on
18 February 2003,
having regard to the reply of OHIM lodged at the Registry of the Court of First Instance on
30 May 2003,
makes the following
Order
Grounds
Background to the dispute
1. On 17 July 2000, the company American Tool Co., Inc., now called Irwin Industrial Tool Co., filed with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) an application for registration of a Community trade mark under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The mark in respect of which registration was sought was the word mark QUICK‑GRIP.
3. The goods in respect of which registration was sought fall within Class 8 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Trade Marks of 15 June 1957, as revised and amended, and are described as follows: ‘Hand tools; clamps, c-clamps, bar clamps, hold-down clamps, spreading clamps, welding clamps, chain clamps, locking bar clamps, locking hold-down clamps, locking pipe clamps, pipe clamps; parts and fittings for the aforesaid goods’.
4. By decision of 29 November 2001, the examiner refused the application under Article 7(1)(b) and (c) of Regulation No 40/94 in respect of all the goods claimed, the mark sought being regarded as descriptive and devoid of distinctive character. Moreover, the examiner took the view that no evidence had been adduced as to the possibility that the mark sought might have become distinctive as a result of the use made of it in the European Community.
5. On 29 January 2002, American Tool Co., Inc. lodged with OHIM an appeal under Article 59 of Regulation No 40/94 against the examiner’s decision.
6. By decision of 20 November 2002 (‘the contested decision’), which was notified to the applicant on 18 December 2002, the Third Board of Appeal of OHIM dismissed the appeal.
7. The Board of Appeal held, essentially, that, as a whole, the mark sought conveyed the idea that the grip effect (‘grip’) could be achieved easily and quickly (‘quick’) and was thus a self-explanatory and unequivocal description of the kind and use of the goods in question. Moreover, observing that, for the purposes of Article 7(1) of Regulation No 40/94, it is sufficient that only one absolute ground for refusal applies for a sign to be ineligible for registration as a Community trade mark, the Board of Appeal took the view that it was unnecessary to rule on the absolute ground for refusal based on Article 7(1)(b) of Regulation No 40/94.
Forms of order sought by the parties
8. The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to refer the case back to the examiner and/or the Board of Appeal with a view to examining the appeal in the light of Article 7(1)(b) of Regulation No 40/94.
9. OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Admissibility
10. By the second head of claim, the applicant asks the Court to order OHIM to refer the case back to the examiner and/or the Board of Appeal so that it may rule on the trade mark application in the light of Article 7(1)(b) of Regulation No 40/94.
11. It is settled case-law that, under Article 63(6) of Regulation No 40/94, the Office is to take the measures necessary to comply with the judgment of the Court of Justice. Accordingly, the Court of First Instance is not entitled to issue directions to the Office (Case T‑331/99 Mitsubishi HiTec Paper Bielefeld
v OHIM (Giroform)
[2001] ECR II‑433, paragraph 33; Case T‑34/00 Eurocool Logistik
v OHIM (EUROCOOL)
[2002] ECR II‑683, paragraph 12; and Case T‑388/00 Institut für Lernsysteme
v OHIM – Educational Services (ELS)
[2002] ECR II‑4301, paragraph 19). It follows that the second head of claim must be rejected as inadmissible.
Substance
12. In support of its action, the applicant alleges infringement of Article 7(1)(b) and (c) of Regulation No 40/94. It is appropriate to examine first the complaint of infringement of Article 7(1)(c) of that regulation.
Arguments of the parties
13. The applicant submits, first of all, that the mark in respect of which registration was sought does not consist exclusively of a sign which may serve, in trade, to designate the kind of goods in question. According to the applicant, the use of the English word ‘quick’, which indicates a certain swiftness or speed, in combination with the word ‘grip’ is unusual. The combination of those terms therefore does not have a self-explanatory and unequivocal meaning, particularly not in the mind of the consumer of the goods in question.
14. Next, the applicant claims that the Board of Appeal failed to take account of the fact that clamps are not usually described by reference to ‘ease’ or ‘speed’. It is uncommon to use the term ‘quick’ in relation to the goods in question since speed is neither a desirable characteristic of, nor a quality sought in, such goods. Therefore, contrary to what the Board of Appeal held, the term ‘quick’ is not laudatory.
15. Finally, according to the applicant, the Board of Appeal was wrong to take the view that the words ‘easy’ and ‘speedy’ are synonyms and that their meaning is covered by the word ‘quick’.
16. OHIM replies that the precise meaning of the word ‘exclusively’ in the context of Article 7(1)(c) of Regulation No 40/94 is linked to the test for descriptiveness of marks. In that context, the word in question relates to the verb ‘consist’. That means that, where at least one of the possible meanings of a sign identifies a feature of the goods or services concerned, registration of the sign must be refused under Article 7(1)(c) of Regulation No 40/94.
17. In the present case, OHIM contends that, whilst it is true that each of the components of the mark QUICK-GRIP being applied for can have different meanings in English, where the word ‘quick’ is used as part of a special collocation or phrase (for example, ‘quick-fire’, ‘quick-freeze’, ‘quick-knit’, ‘quick-look’, ‘quick-release’, etc.), it nevertheless generally conveys the idea of rapidity or speed. Moreover, the vast majority of meanings of the word ‘grip’ relate to the idea of grasping or holding firmly or solidly. Accordingly, where joined by a hyphen, the two words may indeed be used to identify a feature of the goods since clamps are an appliance or tool for holding, making fast or holding firmly. The descriptiveness of the words ‘quick grip’ is confirmed by the frequent use made of them by traders in their advertisements on the internet for several goods, including clamps. In those advertisements, the combination ‘quick-grip’ conveys the idea of ease, speed and firm holding.
18. OHIM adds that the sign QUICK‑GRIP does not satisfy any of the criteria laid down by the case-law on word marks. It is not a lexical invention, elliptical, unusual in its structure or syntactical juxtaposition and it cannot stand up to an intuitive grammatical analysis. First, the addition of a hyphen between ‘quick’ and ‘grip’ is not a decisive factor in English grammar and is an imperceptible difference or, in any event, one which has no bearing on the meaning of the sign. Second, the sign in question is not elliptical. Third, the structure and juxtaposition of the words ‘quick’ and ‘grip’ are not unusual. The words in question are used by English-speakers in combination and in that order, with or without a hyphen (for example, ‘quick-fire’, ‘quick-freeze’, ‘quick buck’, ‘quick bread’, ‘quick march’, ‘quick time’, ‘quick water’, etc.), and are not an anastrophe.
19. Moreover, OHIM claims that, even if the word ‘quick’ can be regarded as an unusual term of praise, it describes a common characteristic of clamps, namely that they hold firmly or grip. Therefore, the consumer may apprehend that the clamp grips rapidly when required or that it can be quickly assembled for use. In either event, those are desirable qualities.
20. Finally, OHIM disputes the applicant’s assertion that the word ‘quick’ is not synonymous with the word ‘easy’. As can be seen from the advertisements on the internet, the word ‘easy’ appears close to the words ‘quick’ and ‘grip’ on a number of occasions and the general message conveyed by the advertisements for clamps or couplings is that they are also easy to use. Moreover, although the dictionary definition of ‘quick’ does not expressly refer to the word ‘easy’, one need only think of such examples as ‘quick meals’ or ‘quick assembly’ to realise that the purveyors of such goods are conveying the attractive idea that the meal or assembly will also be easy.
Findings of the Court
21. Under Article 111 of the Rules of Procedure of the Court of First Instance, where the action is manifestly lacking any foundation in law, the Court may give a decision by reasoned order without taking further steps in the proceedings.
22. In the present case, having regard to the relevant case-law of the Court of Justice and the Court of First Instance and to the fact that the arguments relied on by the parties before the Court are identical to those put forward before the Third Board of Appeal of OHIM, the Court takes the view that the documents on the case-file provide it with sufficient information and decides, pursuant to Article 111, to give a decision without taking further steps in the proceedings.
23. Article 7(1)(c) of Regulation No 40/94 provides that ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered. In addition, Article 7(2) of Regulation No 40/94 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
24. Accordingly, signs and indications which may serve in trade to designate the characteristics of the goods or services in respect of which registration is sought are, by virtue of Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark, without prejudice to the possibility of their acquiring distinctive character through use under Article 7(3) of Regulation No 40/94 (see Case C‑191/01 P OHIM
v Wrigley
[2003] ECR I‑0000, paragraph 30, and the case-law cited therein). Such signs do not make it possible to identify the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service 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 (Case T‑219/00 Ellos
v OHIM (ELLOS)
[2002] ECR II‑753, paragraph 28, and Case T‑348/02 Quick
v OHIM (Quick)
[2003] ECR II‑0000, paragraph 28).
25. By prohibiting the registration as Community trade marks of such signs and indications, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision thus prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see OHIM
v Wrigley, cited above, paragraph 31, and the case-law cited therein).
26. The descriptiveness of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (see Quick, cited above, paragraph 29, and the case-law cited therein).
27. In the present case, the goods covered by the mark sought, as set out in paragraph 1 of the contested decision, are goods for everyday consumption aimed at all consumers. Consequently, the relevant public is deemed to be the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the sign QUICK-GRIP is composed of English words, the relevant public by reference to which the absolute ground for refusal must be examined is the average English-speaking consumer in the Community (Case C‑342/97 Lloyd Schuhfabrik Meyer
[1999] ECR I‑3819, paragraph 26; Case T‑295/01 Nordmilch
v OHIM (OLDENBURGER)
[2003] ECR II‑0000, paragraph 35; and Quick, paragraph 30).
28. Accordingly, for the purposes of applying the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 40/94, it must be determined whether the relevant public will make a sufficiently direct and specific association between the word sign QUICK-GRIP and the goods in respect of which the application for registration was refused.
29. The word sign QUICK‑GRIP is composed of an adjective (quick) and a noun (grip) which are joined by a hyphen. There does not appear to be anything unusual about the structure of the sign. It does not diverge from English word composition rules but rather complies with them. Therefore, it will not be perceived as unusual by the consumer concerned (Case T‑222/02 HERON Robotunits
v OHIM (ROBOTUNITS)
[2003] ECR I‑0000, paragraph 39).
30. As regards the meaning of the word sign QUICK‑GRIP and the nature of the link between it and the goods concerned, the Board of Appeal found, first of all, in paragraph 11 of the contested decision, that the sign consists of two English words, ‘quick’ and ‘grip’, which are joined by a hyphen, the first word meaning ‘acting or capable of acting with speed; capable of being easily and speedily prepared’ and the second ‘the act or an instance of grasping and holding firmly; any device that holds by friction’. Next, in paragraph 13 of the contested decision, the Board of Appeal took the view that the combination of those two words contains obvious and direct information on the nature and intended purpose of the goods in question, that the addition of the word ‘quick’ does not make the element ‘grip’ any less descriptive and that, on the contrary, the element ‘quick’ tends to convey a laudatory meaning and the impression that the grip effect can be achieved easily and speedily. Finally, the Board of Appeal found that it could ‘not be denied that the combination of these two terms, as a whole, has a self-explanatory and unequivocal meaning which refers clearly to the kind and intended purpose of the goods applied for’.
31. In view of the goods in respect of which registration was sought, the meaning identified by the Board of Appeal is manifestly correct. The sign in question enables the public targeted to ascertain immediately and without further reflection that the clamps and other goods concerned grip easily and speedily. Therefore, the choice of the words ‘quick’ and ‘grip’ by no means requires a leap of imagination or arbitrary decision on the part of the consumer.
32. Accordingly, the applicant’s argument that the sign QUICK‑GRIP may have more than one meaning or that speed is not a quality sought in the goods in question is irrelevant. According to the case-law, a sign must be refused registration under Article 7(1)(c) of Regulation No 40/94 if, as in the present case, at least one of its possible meanings designates a characteristic of the goods or services concerned ( OHIM
v Wrigley, paragraph 32, and Case T‑355/00 DaimlerChrysler
v OHIM (TELE AID)
[2002] ECR II‑1939, paragraph 30).
33. It follows that the link between the word sign QUICK‑GRIP and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) of Regulation No 40/94.
34. Accordingly, the Board of Appeal was right to confirm that, under Article 7(1)(c) of Regulation No 40/94, the word sign QUICK‑GRIP is ineligible for registration as a Community trade mark because it is descriptive of the nature and intended use of the goods in question.
35. As is evident from Article 7(1) of Regulation No 40/94, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign not to be registrable as a Community trade mark (Case C‑104/00 P DKV
v OHIM
[2002] ECR I‑7561, paragraph 29, and Quick, paragraph 37).
36. It is therefore unnecessary to rule on the second plea in law alleging infringement of Article 7(1)(b) of Regulation No 40/94 ( Giroform, cited above, paragraph 31).
37. In light of all of the above findings, the action must be dismissed as manifestly lacking any foundation in law.
Decision on costs
Costs
38. Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by the latter.
Operative part
On those grounds,
THE COURT OF FIRST INSTANCE (Fourth Chamber)
hereby orders:
1. The action is dismissed.
2. The applicant shall pay the costs.