Court of Justice of the European Communities (including Court of First Instance Decisions)

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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

28 June 2017 (*)

(EU trade mark — Application for EU figurative mark AROMASENSATIONS — Absolute ground for refusal — No distinctive character — Article 7(1)(b) and (2) of Regulation (EC) No 207/2009)

In Case T‑479/16,

Colgate-Palmolive Co., established in New York, New York (United States), represented by M. Zintler and A. Stolz, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and M. Simandlova, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 June 2016 (Case R 2482/2015-2), concerning an application for registration of the figurative sign AROMASENSATIONS as an EU trade mark,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu-Matei, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 30 August 2016,

having regard to the response lodged at the Court Registry on 2 November 2016,

further to the hearing on 24 April 2017,

gives the following

Judgment

 Background to the dispute

1        On 5 June 2015, the applicant, Colgate-Palmolive Co., 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).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Class 3 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 to the following description: ‘Body and skin cleansing preparations’.

4        On 26 June 2015, the examiner, in accordance with Rule 11(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by, inter alia, Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), informed the applicant of his objections to the registration of the mark applied for, which were based on Article 7(1)(b) and (2) of Regulation No 207/2009. The applicant maintained its application for registration.

5        By decision of 30 October 2015, the examiner rejected the EU trade mark application on the basis of Article 7(1)(b) and (2) of Regulation No 207/2009, on the ground that the mark applied for was devoid of any distinctive character.

6        On 14 December 2015, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

7        By decision of 6 June 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it noted that the term ‘aromasensations’, contained in the sign applied for, would be perceived as a promotional laudatory message, the function of which is to describe a characteristic of the goods. The Board of Appeal therefore concluded that the mark applied for was not distinctive, at least for the English-speaking part of the relevant public, and that registration of that mark as an EU trade mark had to be refused in accordance with Article 7(1)(b) and (2) of Regulation No 207/2009.

8        However, the Board of Appeal accepted that the argument could be made for the first time before it that the mark had acquired distinctive character through use in accordance with Article 7(3) of Regulation No 207/2009, and remitted the case to the examiner in order that he might examine that argument.

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision, in so far as the Board of Appeal dismissed the appeal on the basis of Article 7(1)(b) of Regulation No 207/2009;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      In support of its action, the applicant raises two pleas in law alleging, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, second, infringement of the principles of equal treatment and sound administration.

 First plea in law: infringement of Article 7(1)(b) of Regulation No 207/2009

12      The applicant submits that the Board of Appeal erred in concluding in the contested decision that the mark applied for had no distinctive character. It argues that, according to case-law, an ambiguous sign, which conveys several possible meanings and displays a high level of abstraction, is in principle distinctive. The mere fact that a mark can convey a laudatory message is not sufficient, in itself, to support the conclusion that that mark is devoid of any distinctive character. In addition, a minimum degree of distinctive character is sufficient to permit the conclusion that a mark is distinctive.

13      EUIPO disputes those arguments.

14      In that regard, it should be borne in mind that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

15      According to settled case-law, the distinctive character of a trade mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 28 April 2015, Volkswagen v OHIM (EXTRA), T‑216/14, not published, EU:T:2015:230, paragraph 13 and the case-law cited, and order of 24 June 2015, Wm.Wrigley Jr. v OHIM (Extra), T‑552/14, not published, EU:T:2015:462, paragraph 13 and the case-law cited).

16      In that regard, it should be borne in mind that the signs which are devoid of any distinctive character that are referred to in Article 7(1)(b) of Regulation No 207/2009 are deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services covered by that mark, thus enabling the consumer who acquired those goods or services to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see judgment of 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 14 and the case-law cited).

17      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, second, by reference to its perception by the relevant public, which consists of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect (see judgment of 14 September 2009, Lange Uhren v OHIM (Geometric shapes on a watch-face), T‑152/07, not published, EU:T:2009:324, paragraph 127 and the case-law cited).

18      The Court has already held, as regards assessing the distinctive character of 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, that it was inappropriate to apply to such marks criteria which are stricter than those applicable to other types of sign (see judgments of 11 December 2012, Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, not published, EU:T:2012:663, paragraph 16 and the case-law cited, and of 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 17 and the case-law cited).

19      It is apparent from case-law that a minimum degree of distinctiveness is sufficient to prevent application of the absolute ground for refusal provided for in Article 7(1)(b) of Regulation No 207/2009 (see judgment of 25 September 2015, BSH v OHIM (PerfectRoast), T‑591/14, not published, EU:T:2015:700, paragraph 40 and the case-law cited).

20      It follows that a trade mark consisting of an advertising slogan 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 (order of 12 June 2014, Delphi Technologies v OHIM, C‑448/13 P, not published, EU:C:2014:1746, paragraph 37; judgments of 11 December 2012, Qualität hat Zukunft, T‑22/12, not published, EU:T:2012:663, paragraph 22, and of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24).

21      It is in the light of those considerations that the Court must examine whether, as the applicant claims, EUIPO infringed Article 7(1)(b) of Regulation No 207/2009 by concluding that the mark applied for was devoid of any distinctive character.

22      In the first place, as the Board of Appeal stated in paragraphs 17 to 19 of the contested decision, as the mark applied for is composed of English words, the relevant public consists of at least the public in the Member States in which English is an official language, namely Ireland, the Republic of Malta and the United Kingdom of Great Britain and Northern Ireland. In addition, in view of the nature of the goods in question, the relevant public’s level of attention will be that of an average consumer who is reasonably well informed and reasonably observant and circumspect, which, moreover, is not contested by the applicant.

23      In the second place, the applicant challenges the Board of Appeal’s assessment according to which the combination of the words ‘aroma’ and ‘sensations’ is devoid of any distinctive character. It argues that the term ‘aroma’ is distinctive in itself. That term is connected in particular with the flavour experienced when a delicious food or drink, such as chocolate or a glass of wine, is tasted and does not, contrary to what was held by the Board of Appeal, refer solely to ‘a certain pleasant scent’. That term is therefore distinctive with regard to personal care products, which are not, as such, connected with the term ‘aroma’. In addition, that term does not contain a purely laudatory message and also has other meanings which do not contain a purely promotional message in relation to the goods in question. Thus, the term ‘aroma’ can also mean ‘in Rome’ in Italian. The term ‘sensations’ is also distinctive due to its numerous meanings.

24      It should be borne in mind, in that regard, that a word sign must be refused registration 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). That case-law, which was first developed in connection with Article 7(1)(c) of Regulation No 207/2009, is also applicable, by analogy, to Article 7(1)(b) of that regulation (judgment of 29 April 2010, Kerma v OHIM (BIOPETRA), T‑586/08, not published, EU:T:2010:171, paragraph 35).

25      Regarding, first, the term ‘aroma’, the Board of Appeal correctly defined that term as being a ‘distinctive, usually pleasant smell, especially of spices, wines and plants’. The Court has indeed already used such a definition in its judgment of 12 May 2016, Chung-Yuan Chang v EUIPO — BSH Hausgeräte (AROMA) (T‑749/14, not published, EU:T:2016:286, paragraph 30).

26      Accordingly, given that the aroma or scent is, as the Board of Appeal was fully entitled to note, an important characteristic of the goods in question, it did not err in considering, in paragraph 25 of the contested decision, that the relevant public would immediately understand the term ‘aroma’ as designating the olfactory properties of those goods. It is therefore of scant importance, in view of the case-law referred to in paragraph 24 above, that that term might also be understood as referring to the act of going ‘to Rome’, assuming that the English-speaking public is capable of attributing such a meaning to the term ‘aroma’ in connection with the goods concerned.

27      Regarding, second, the term ‘sensations’, contrary to the applicant’s assertions, that term was defined by the Board of Appeal, in paragraph 24 of the contested decision, as designating the ‘power of perceiving through the senses; [the] physical condition or experience resulting from the stimulation of one of the sense organs’. Such a definition is not incorrect and, moreover, has not been called in question. Accordingly, the Board of Appeal also did not err in considering, in paragraph 26 of that decision, that the term ‘sensations’, combined with the term ‘aroma’, will be understood, in connection with the goods concerned, as ‘experiences resulting from the stimulation of one of the sense organs [olfaction] by a certain [in principle] pleasant scent’. Having regard to the case-law cited in paragraph 24 above, it is irrelevant that the terms ‘aroma’ and ‘sensations’ may also have other meanings in different contexts.

28      In the third place, the applicant argues that the Board of Appeal incorrectly interpreted the effect of the figurative elements of the mark applied for. According to case-law, the distinctive character of a compound mark can result both from the distinctive character of one of its elements, considered separately, and from the combination of all of its elements, even if they may not be distinctive individually. The graphical elements of the mark applied for, connected with the term ‘aroma’ and personal care products, produce a contrast due to the presence of the green colour on the one hand, which will refer to nature, for example, plants, trees, fruits and vegetables, and the metallic grey colour on the other. The mark applied for therefore makes a unique and unusual impression on the relevant public and is, accordingly, distinctive.

29      In that regard, it should be noted that, contrary to the applicant’s assertions, the graphical elements do not add anything unusual to the perception of the sign by the relevant public that would be such as to render the sign fanciful and thereby to confer a distinctive character on it. As EUIPO contends, the graphical elements of the mark applied for are nothing more than a common colour combination, used to highlight the text of that mark.

30      Accordingly, the Board of Appeal did not err in considering, in paragraph 29 of the contested decision, that the graphical elements cannot divert the attention of the public concerned away from the purely laudatory and non-distinctive message resulting, in the present case, from the term ‘aromasensations’.

31      In the fourth place, the applicant considers that the mark applied for is, as a whole, abstract and ambiguous and that, accordingly, it is distinctive. Indeed, the word element of the mark applied for consists of the fusion of two very different words and thus generates the neologism ‘aromasensations’ which, by definition, is new and unique and, consequently, distinctive.

32      It must however be pointed out, as the Board of Appeal did in paragraph 27 of the contested decision, that the term ‘aromasensations’ is a grammatically correct combination of two separate words which has nothing unusual or striking about it, given that it merely combines the meanings lent by the words of which it is composed. The absence of a space or hyphen between the two words of which the mark applied for is composed does not constitute a creative element rendering the mark as a whole capable of distinguishing the goods of one undertaking from those of other undertakings (see judgment of 13 November 2008, Duro Sweden v OHIM (EASYCOVER), T‑346/07, not published, EU:T:2008:496, paragraph 52 and the case-law cited).

33      Moreover, even assuming that the two words constituting the word element of the sign AROMASENSATIONS are simply juxtaposed without strictly observing the rules of English grammar, such an element is not sufficient either to make it a lexical invention liable to give it a distinctive character or to give it an original character, which, in any event, is not a criterion for assessing the distinctive character of a sign (see judgment of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 32 and the case-law cited).

34      Accordingly, in the present case, as the Board of Appeal stated in paragraph 28 of the contested decision, the relevant public will not generally perceive in the term ‘aromasensations’ any particular indication of commercial origin, apart from the promotional information conveyed, which merely highlights the positive aspects of the goods concerned, namely that they are body and skin cleansing preparations which stimulate the senses by means of their pleasant scents.

35      While it is true, as the applicant argues, that a minimum degree of distinctive character is sufficient to permit the conclusion that a mark is distinctive, it is also necessary that that mark be capable, apart from its promotional function, of being perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned. However, in the present case, as EUIPO contends, the semantic content of the sign in question indicates to the consumer a characteristic of the goods which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of goods or services (see, to that effect, judgment of 6 June 2013, Inspired by efficiency, T‑126/12, not published, EU:T:2013:303, paragraph 25 and the case-law cited).

36      Lastly, the applicant argues, correctly, that an advertising slogan cannot be required to display a certain level of creativity or imagination in order to be distinctive within the meaning of Article 7(1)(b) of Regulation No 207/2009. It should be noted, however, that the Board of Appeal did not base its assessment exclusively on a lack of creativity in the mark applied for, but rather on its inability to designate the commercial origin of the goods in question.

37      Consequently, in the light of all those considerations, the Board of Appeal did not err in concluding that the mark applied for, taken as a whole, was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

 Second plea in law: infringement of the principles of equal treatment and sound administration

38      The applicant submits that the Board of Appeal should have taken account of the fact that it was already the holder of several AROMA SENSATIONS or AROMASENSATIONS word marks registered in several Member States in respect of personal care products, without the national trade mark and patent offices in those countries having raised any objections. In addition, EUIPO has already registered 14 EU figurative marks containing the term ‘aromasensations’ filed by the applicant for goods in Class 3. The reasoning in the contested decision in the present case therefore infringes the principles of sound administration and equal treatment.

39      EUIPO disputes those arguments.

40      Firstly, regarding the marks registered by the national trade mark and patent offices, as the Board of Appeal correctly recalled in paragraph 35 of the contested decision, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and its application is independent of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules, so that EUIPO and, if appropriate, the courts of the European Union are not bound by a decision given in a Member State that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national harmonised legislation (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).

41      Secondly, regarding the trade marks which were registered by EUIPO containing the term ‘aromasensations’, it should first of all be borne in mind that EUIPO’s earlier decisions cannot give rise to legitimate expectations (see judgment of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 72 and the case-law cited).

42      Furthermore, the various trade marks relied on by the applicant, which also contain the term ‘aromasensations’, were accepted by EUIPO’s examiner. It is sufficient to state that neither the Board of Appeal nor the Court can be bound in any way by the decisions adopted by that examiner. In particular, it would be contrary to the Board of Appeal’s purpose, as defined in recital 13 and in Articles 58 to 64 of Regulation No 207/2009, for its jurisdiction to be restricted by the requirement to respect the decisions of the first-instance adjudicating bodies of EUIPO (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 73 and the case-law cited).

43      In addition, it should be noted, as the Board of Appeal observed in paragraph 33 of the contested decision, that the marks in question, to which the applicant refers, also all contained the distinctive word ‘palmolive’, as well as figurative elements dissimilar to those in the mark applied for.

44      Accordingly, in the light of those considerations, the Board of Appeal did not infringe the principles of equal treatment and sound administration by refusing to register the mark applied for.

45      Therefore, the second plea in law must also be rejected and the action must be dismissed in its entirety.

 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, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Colgate-Palmolive Co. to pay the costs.

Delivered in open court in Luxembourg on 28 June 2017.

* Language of the case: English.

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