Procter & Gamble Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs).
Date: 2001-09-20
19 It is clear from paragraph 9 of the contested judgment that the appellant asked the Court of First Instance, inter alia, as its principal claim, to annul the contested decision in so far as that decision found that the mark did not satisfy the conditions laid down in Article 7(1)(b) and (c) of Regulation No 40/94 and, in the alternative, to annul the contested decision in so far as it found the applicant's submissions based on Article 7(3) of Regulation No 40/94 to be inadmissible.
20 The Court of First Instance began by explicitly dismissing the principal claim, stating at paragraph 28 of the contested judgment that the First Board of Appeal of the OHIM was correct to take view that BABY-DRY was not capable of constituting a Community trade mark under Article 7(1)(c) of Regulation No 40/94. It was only after dismissing that principal claim that the Court of First Instance found that, in declaring the appellant's submissions based on Article 7(3) inadmissible, the Board had infringed Article 62 of Regulation No 40/94 and went on to uphold the alternative claim in the action.
21 From its consideration of the two alternative claims, the Court of First Instance reached the overall conclusion, at paragraph 54 of the contested judgment, that the contested decision had to be annulled in so far as the First Board of Appeal of the OHIM was wrong to refuse to examine the applicant's arguments based on Article 7(3) of Regulation No 40/94. It added that it was for the OHIM to take the necessary measures to comply with its judgment.
22 In those circumstances, and notwithstanding the fact that the operative part of the contested judgment does not expressly restate the limitation expressed in paragraph 54, it must be held that the contested judgment gives the appellant only partial satisfaction.
23 Although the contested decision takes the form of a single act, the First Board of Appeal of the OHIM in fact adopted two measures, one refusing to register BABY-DRY on the grounds laid down in Article 7(1)(b) and (c) of Regulation No 40/94, and the other dismissing the appellant's arguments based on Article 7(3) as inadmissible.
24 By annulling the contested decision for refusing to consider the arguments relating to Article 7(3) of Regulation No 40/94 and in doing so on that ground alone, the contested judgment allowed that part of the decision relating to the compatibility of BABY-DRY with the requirements of Article 7(1)(b) and (c) of the regulation to stand.
25 The annulment by the Court of First Instance of the act submitted to it for judicial review was therefore only partial. In order for the OHIM to take the necessary measures to comply with the contested judgment, as these are referred to in paragraph 54 thereof, the OHIM could therefore have simply confined itself to considering the trade mark application in the light of Article 7(3) of Regulation No 40/94 without altering its interpretation of Article 7(1)(b) and (c) of the regulation, which the Court of First Instance had endorsed.
26 Procter & Gamble thus has an interest in bringing the appeal against the contested judgment in so far as that judgment dismissed its application for annulment of the decision to refuse to register the trade mark BABY-DRY made on the basis of Article 7(1)(b) and (c) of Regulation No 40/94.
39 The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are thus only those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.
40 As regards trade marks composed of words, such as the mark at issue here, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.
45 The Court of First Instance therefore erred in law in holding that the OHIM'S First Board of Appeal was right to find that BABY-DRY was not capable of constituting a Community trade mark on the basis of that provision.