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

JUDGMENT OF THE GENERAL COURT (Tenth Chamber)

8 July 2020 (*)

(EU trade mark — Application for EU word mark Moins de migraine pour vivre mieux — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)

In Case T‑696/19,

Teva Pharmaceutical Industries Ltd, established in Petah Tikva (Israel), represented by J. Bogatz and Y. Stone, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 August 2019 (Case R 778/2019‑5), relating to an application for registration of the word sign Moins de migraine pour vivre mieux as an EU trade mark,

THE GENERAL COURT (Tenth Chamber),

composed of A. Kornezov, President, E. Buttigieg and K. Kowalik‑Bańczyk (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 14 October 2019,

having regard to the response lodged at the Court Registry on 9 January 2020,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 14 August 2018, the applicant, Teva Pharmaceutical Industries Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 Moins de migraine pour vivre mieux.

3        The goods and services in respect of which registration was sought are in Classes 16 and 44 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, for each of those classes, to the following description:

–        Class 16: ‘Printed materials relating to the treatment of migraines’;

–        Class 44: ‘Providing information relating to the treatment of migraines’.

4        By decision of 22 February 2019, the examiner refused registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) of Regulation 2017/1001.

5        On 9 April 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

6        By decision of 12 August 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal brought by the applicant, on the basis of Article 7(1)(b) of Regulation 2017/1001. More specifically, it found that the mark applied for was devoid of distinctive character on the ground that that mark is perceived by the relevant public as a promotional slogan relating to the quality of the goods and services in question.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        publish the application for registration of the mark applied for;

–        order EUIPO to pay the costs.

8        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        As follows from the first and second indents of paragraph 7 above, the action consists of two heads of claim. In support of those heads of claim, the applicant raises, in essence, two pleas in law alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001 and, second, infringement of the principle of equal treatment.

 The first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

10      The applicant disputes, first, the definition of the relevant public adopted by the Board of Appeal and submits, second, that that public will perceive the mark applied for as an indication of the commercial origin of the goods and services in question.

11      EUIPO disputes the applicant’s arguments.

12      Under Article 7(1)(b) of Regulation 2017/1001, 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) of the regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

13      According to settled case-law, a mark has a distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, when that mark serves 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 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited).

14      The distinctive character of a mark can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign, which consists of average consumers of those goods or services (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).

15      In the present case, in the first place, the Board of Appeal noted, for the purposes of defining the relevant public, that the goods and services in question related to migraines. It concluded that they are used only occasionally, whenever there is a specific therapeutic need, and that the general public takes a great interest in those goods and services. Furthermore, it chose to assess the distinctive character of the mark applied for only with regard to the French-speaking public of the European Union.

16      The applicant submits, first, that, for the purposes of defining the relevant public, the Board of Appeal erred in equating the goods and services in question to migraine treatments, which are generally in Class 5.

17      However, it should be noted that, although the Board of Appeal found that the goods and services in question ‘relate[d]’ to migraines, it did not find that those goods and services were themselves migraine treatments. Furthermore, since it follows from the actual description of those goods and services, referred to in paragraph 3 above, that they concern the treatment of migraines, the applicant cannot validly complain that the Board of Appeal found that they were used whenever there is a therapeutic need.

18      The applicant claims, second, that the Board of Appeal refrained from ‘defining whether the relevant public is made up of the average consumer or the specialised public’.

19      However, it should be recalled that ‘average consumer’ cannot be understood as only the consumer who is part of the ‘general public’, but the consumer who is part of the public specifically targeted by the goods and services in question. Thus, the ‘average consumer’ may be a professional whose degree of specialisation is high, if the goods and services in questions are aimed specifically at such a public, even if it is conceivable that those goods and services are also, on occasion, purchased by uninformed consumers who are part of the general public (judgment of 8 November 2017, Steiniger v EUIPO — ista Deutschland (IST), T‑80/17, not published, EU:T:2017:784, paragraph 25).

20      It follows that, contrary to the applicant’s assertion, it was not for the Board of Appeal to determine whether the relevant public was composed of the ‘average consumer’, but to clarify what constituted that average consumer.

21      In any event, it must be stated, as EUIPO has done, that the applicant’s argument is based on an incorrect reading of the contested decision, to the extent that, as is clear from paragraph 18 of that decision, the Board of Appeal expressly referred, in order to define the relevant public, to the general public and not to the specialist public.

22      In the second place, first, the Board of Appeal noted, which the applicant does not dispute, that the relevant public would perceive the mark applied for as a promise to live better with fewer migraines.

23      Second, as stated in paragraph 17 above, it follows from the actual description of the goods and services in question that they relate to the treatment of migraines. In that regard, although the applicant submits that those goods and services cannot, as such, treat migraines, the applicant nevertheless acknowledges that they may provide guidance to the relevant public to help choose an appropriate treatment for migraines.

24      In those circumstances, the Board of Appeal was correct in finding that the mark applied for would be perceived by the relevant public as a promotional slogan indicating that the goods and services in question may be useful in alleviating migraines and thus improve quality of life.

25      In the third place, it should be observed, as the applicant correctly submitted, that 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, it is inappropriate to apply to slogans, according to the case-law, criteria which are stricter than those applicable to other types of sign (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36 and the case-law cited; judgment of 25 May 2016, U-R LAB v EUIPO (THE DINING EXPERIENCE), T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 47).

26      However, it is apparent from the case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited; judgment of 25 May 2016, THE DINING EXPERIENCE, T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 47).

27      It also follows from the case-law that all 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 convey by definition, to a greater or lesser extent, an objective message, even a simple one, and can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57 and the case-law cited; judgment of 25 May 2016, THE DINING EXPERIENCE, T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 48).

28      In the present case, it should be noted that the expression ‘moins de migraine pour vivre mieux’ is not unusual in terms of the rules of French syntax, grammar, phonetics or semantics. Thus, that expression conveys a simple, clear and unequivocal message to the relevant public, which is not likely to confer any particular originality or resonance, to require at least some interpretation or to set off a cognitive process.

29      Nevertheless, the applicant maintains that the Board of Appeal placed too much emphasis on the fact that the expression ‘moins de migraine pour mieux vivre’ was grammatically correct, whereas the mark applied for gives hope to the relevant public, making it dream and letting that public imagine to what extent alleviation from migraines could improve life. The applicant added that that public will not immediately understand how the goods and services in question could alleviate migraines and will therefore be curious to know the ‘content’ of those goods and services.

30      In that regard, it must be observed that the fact that the mark applied for encourages the relevant public to discover the goods and services in question by promising to improve daily life makes it possible to establish the promotional character of the mark applied for, which the Board of Appeal correctly noted. It is not, on the other hand, capable of indicating, as such, the commercial origin of those goods and services.

31      It follows that the Board of Appeal was correct in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

32      That finding cannot be called into question by the applicant’s argument that the Board of Appeal erred in finding that the relevant public would not pay much attention to advertising messages. Since the Board of Appeal also correctly found that the mark applied for would be perceived as an advertising message, in particular as a promotional slogan, and not as an indication of the origin of the goods and services in question, it must be held that it also correctly observed that that mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

33      Consequently, it follows from the foregoing that the first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, must be rejected.

 The second plea in law, alleging infringement of the principle of equal treatment

34      The applicant submits that the Board of Appeal infringed the principle of equal treatment by erroneously departing from its decision-making practice. The applicant thus refers in particular to the registration of the EU trade mark LESS MIGRAINE, MORE MOMENTS, which, according to it, is the English version of the mark applied for and which it had relied on in support of its action before the Board of Appeal.

35      EUIPO disputes the applicant’s arguments.

36      In that regard, it should be noted that, in accordance with settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, 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 or annulled. Accordingly, such an 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 (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 61). Furthermore, in its review of legality, the Court is not bound by EUIPO’s decision-making practice (see judgment of 3 September 2015, iNET24 Holding v OHIM (IDIRECT24), T‑225/14, not published, EU:T:2015:585, paragraph 60 and the case-law cited).

37      In the present case, as is clear from paragraphs 15 to 33 above, the Board of Appeal was correct in finding that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001, with the result that the applicant cannot successfully rely on EUIPO’s previous decisions in order to invalidate that conclusion.

38      Furthermore, the Board of Appeal explained, in paragraph 34 of the contested decision, that the EU trade mark LESS MIGRAINE, MORE MOMENTS, relied on by the applicant, was, on account of its vague and unusual character, distinguishable from the mark applied for. It cannot therefore, in any event, be criticised for not having considered with special care whether or not it should decide in the same way in the present case, in accordance with the case-law referred to in paragraph 36 above.

39      In those circumstances, it follows from the foregoing that the second plea in law, alleging infringement of the principle of equal treatment, must be rejected, with the result that the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.

 Costs

40      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 (Tenth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Teva Pharmaceutical Industries Ltd to pay the costs.

Delivered in open court in Luxembourg on 8 July 2020.

*      Language of the case: English.

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