(Appeal Community trade mark Regulation (EC) No 40/94 Articles 55(1)(a) and 7(1)(c) Interest in bringing an application for a declaration of invalidity of a trade mark based on an absolute ground for invalidity Law firm Word sign 'COLOR EDITION' Descriptive character of a word mark composed of descriptive elements)
- By its appeal, Lancôme parfums et beauté & Cie SNC ('Lancôme') requests the Court to set aside the judgment of the Court of First Instance of the European Communities (now 'the General Court') of 8 July 2008 in Case T-160/07 Lancôme v OHIM CMS Hasche Sigle (COLOR EDITION) [2008] ECR II-1733 ('the judgment under appeal'), by which that court dismissed the action brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 February 2007 declaring invalid the registration of the word mark COLOR EDITION for cosmetic and make-up preparations.
Legal framework
- Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1; 'the regulation'), states:
'The following shall not be registered:
...
(c) 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'.
- Article 55(1) of the regulation is worded as follows:
'An application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted to the Office:
(a) where Articles 50 and 51 apply, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued;
(b) where Article 52(1) applies, by the persons referred to in Article 42(1);
(c) where Article 52(2) applies, by the owners of the earlier rights referred to in that provision or by the persons who are entitled under the law of the Member State concerned to exercise the rights in question'.
- Under Article 51(1)(a) of the regulation, a Community trade mark is to be declared invalid on application to OHIM where that mark has been registered in breach of the provisions of Article 7.
- Article 42(1) of the regulation lists the persons who may oppose the registration of a mark by relying on a relative ground for refusal, whereas Article 52 of the regulation determines the relative grounds for invalidity.
Background to the dispute
- On 9 December 2002, Lancôme applied to OHIM for registration of the word sign 'COLOR EDITION' as a Community trade mark.
- The goods in respect of which registration was sought fall within 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: 'Cosmetic and make-up preparations'.
- The mark applied for was registered on 11 February 2004.
- On 12 May 2004, the law firm Norton Rose Vieregge applied to OHIM for a declaration of invalidity of that registration on the basis of Articles 51(1)(a) and 7(1)(b) and (c) of the regulation.
- On 21 December 2005, the Cancellation Division of OHIM rejected that application.
- On 9 February 2006, the law firm CMS Hasche Sigle, the successor to Norton Rose Vieregge, appealed against the decision of the Cancellation Division.
- By decision of 26 February 2007, the Second Board of Appeal of OHIM upheld that appeal. It held, first, that the appeal was admissible and, second, that the word sign 'COLOR EDITION' was descriptive for the purposes of Article 7(1)(c) of the regulation and was, consequently, also devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation.
The procedure before the General Court and the judgment under appeal
- By application lodged at the Registry of the General Court on 7 May 2007, Lancôme brought an action against the decision of the Second Board of Appeal of OHIM of 26 February 2007.
- In support of its action, Lancôme raised three pleas in law alleging, respectively, infringement of Articles 55(1)(a), 7(1)(c) and 7(1)(b) of the regulation.
- In the judgment under appeal, the General Court dismissed that action and ordered Lancôme to pay the costs.
- Having undertaken a textual and teleological analysis of Article 55(1) of the regulation, the General Court rejected the first plea considering that, with regard to applications for a declaration of invalidity based on an absolute ground for invalidity, that article merely requires an applicant to have legal personality or the capacity to sue and be sued, but does not require him to show that he has an interest in bringing proceedings.
- In that regard, the General Court found, in paragraph 25 of the judgment under appeal, that it was apparent from Article 55(1) of the regulation that the legislature had intended to permit any natural or legal person and any group or body having the capacity to sue or be sued to make applications for a declaration of invalidity based on absolute grounds for invalidity whereas, with regard to applications for a declaration of invalidity based on relative grounds for invalidity, it had expressly restricted the group of potential applicants for such a declaration.
- According to paragraph 26 of the judgment under appeal, that analysis is corroborated by the fact that, unlike relative grounds for refusal, which protect only the private interests of proprietors of certain earlier rights, absolute grounds for refusal are based on different general interests and, in order to ensure the widest protection for those general interests, it must be possible for the largest possible number of persons to rely on them.
- In paragraph 35 of the judgment under appeal, the General Court found that, in view of the fact that it was not contested that CMS Hasche Sigle could be treated as a legal person, the Board of Appeal was correct to have declared its application admissible.
- Equally, as regards the second plea in law, the General Court considered that the Board of Appeal had not erred in finding that the mark COLOR EDITION was descriptive for the purposes of Article 7(1)(c) of the regulation. In that regard, it considered there to be a sufficiently direct and specific relationship between that mark, taken as a whole, and the cosmetic and make-up preparations which it covered.
- In that connection, the General Court stated, inter alia, in paragraphs 48 and 49 of the judgment under appeal, that the sign 'COLOR EDITION' was exclusively composed of indications designating certain characteristics of the goods in question and that it did not create, for the target public, an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed.
- Finally, pointing out that it is sufficient that one of the absolute grounds for refusal applies for a sign not to be registrable as a Community trade mark, the General Court dismissed the action without examining the third plea in law.
Forms of order sought by the parties
- Lancôme claims that the Court of Justice should set aside the judgment under appeal, dismiss the appeal brought against the decision of the Cancellation Division of OHIM, order OHIM to pay the costs incurred before the General Court and the Court of Justice, and order CMS Hasche Sigle to pay the costs relating to the appeal proceedings before OHIM.
- OHIM contends that the appeal should be dismissed and Lancôme ordered to pay the costs.
The appeal
- In support of its appeal, Lancôme formally raises two grounds of appeal alleging, respectively, infringement by the General Court of Articles 55(1)(a) and 7(1)(c) of the regulation.
The first ground of appeal, alleging infringement of Article 55(1)(a) of the regulation
- By its first ground of appeal, Lancôme takes exception to the fact that the General Court accepted that a law firm had standing to apply in its own name for a declaration that a Community trade mark was invalid. That ground of appeal is divided into two parts. First, Lancôme submits, in essence, that the General Court misinterpreted Article 55(1)(a) of the regulation in considering an interest in bringing proceedings to be unnecessary in order to make an application for a declaration of invalidity of a Community trade mark on the basis of an absolute ground for invalidity. Second, it submits that it is incompatible with the role of the legal profession, as it is recognised throughout the European Union, for a law firm to be able to make such an application, on its own behalf and in its own name.
The first part of the first ground of appeal, alleging a misinterpretation of Article 55(1)(a) of the regulation in relation to an interest in bringing proceedings
Arguments of the parties
- Lancôme claims that the actio popularis is wholly alien to European Union law. Although Article 230 EC, which requires that the applicant be individually and directly concerned in order to bring an action, is not directly applicable in the present case, Article 55(1)(a) of the regulation must, in its view, none the less be interpreted in the light of the principles which are generally applicable under European Union law. In addition, all legal systems make a distinction between legal capacity and the capacity to sue or be sued. The latter presupposes an interest in bringing proceedings. It should thus not be inferred from the fact that the legislature did not expressly require an interest in bringing proceedings that such an interest is not required.
- It claims that the distinction made by the General Court between administrative and judicial proceedings is irrelevant, since it is not conceivable that the right to bring proceedings before an administrative authority is broader that the right to bring an action against the decisions of such an authority before the Courts of the European Union.
- Similarly, the distinction made by the General Court between absolute and relative grounds for invalidity is irrelevant, since it cannot be inferred from that distinction that it is wholly unnecessary to show an interest in order to make an application for a declaration of invalidity based on an absolute ground for invalidity.
- As regards the refusal to register a mark that is descriptive for the purposes of Article 7(1)(c) of the regulation, the general interest underlying that ground for refusal is the interest, which is recognised in the case'law, of all the trade'mark applicant's or proprietor's competitors, whose right to use a descriptive indication for their own goods or services must be protected from unlawful registrations by a competitor. Consequently, only where actual or potential constraints are imposed on an actual or potential competitor of the applicant may that ground for refusal be relied on.
- That interpretation is confirmed by the explicit rule laid down in Article 55(1)(a) of the regulation, which grants the right to bring an application for a declaration of invalidity to any group or body set up for manufacturers, producers, suppliers of services, traders or consumers, that is to say those who may be affected by the improper registration of a mark.
- Lancôme concludes from the above that Article 55(1)(a) of the regulation must be interpreted as requiring the applicant, in addition to having the capacity to bring proceedings, also to be economically concerned either actually or potentially and, consequently, to have an actual or potential economic interest in having the contested mark declared invalid. That cannot be the case of a law firm which seeks to have a Community trade mark covering cosmetic preparations declared invalid.
- In response, OHIM contends that applications for a declaration of invalidity which are brought before it are governed only by the regulation and its implementing regulation, and that Article 55(1)(a) of the regulation is unambiguous and authorises any person to lodge an application for a declaration of invalidity.
- According to OHIM, Lancôme misinterprets the case'law concerning the general interest underlying the absolute ground for refusal laid down in Article 7(1)(c) of the regulation. That interest is not only the interest of businesses in being able to use descriptive signs, but the interest of any individual, whether in business or not, in preventing descriptive signs from being appropriated exclusively by a single undertaking. That is also confirmed by the fact that the descriptiveness of a sign is assessed in relation to the perception which the relevant public has of it. That public is not restricted to operators in the sector concerned since it includes, above all, consumers and end users.
- In its view, Lancôme also misinterprets Article 55(1)(a) of the regulation. The reference made in that provision to 'groups or bodies' seeks merely to complete the list of persons who may apply for a declaration of invalidity. That article authorises groups or bodies which have the capacity to sue or be sued, but which lack legal personality under national law, to make such an application.
Findings of the Court
- The right to apply to OHIM for a declaration of invalidity of a Community trade mark is not subject to the rules of admissibility applicable to judicial proceedings and specific thereto. In that regard, the General Court did not err in law in stating, in paragraph 32 of the judgment under appeal, that the application for a declaration of invalidity under Article 55(1)(a) of the regulation is an administrative procedure and not a court action and in concluding, on that basis, in paragraph 30 of that judgment, that the case'law concerning Article 230 EC was not relevant to the case before it either directly or by analogy.
- As to whether Article 55(1)(a) of the regulation makes the admissibility of an application for a declaration of invalidity subject to the establishment of an interest in bringing proceedings, the General Court correctly interpreted that article.
- First of all, it is not disputed that, as pointed out by the General Court in paragraph 21 of the judgment under appeal, Article 55(1)(a) of the regulation makes no reference to an interest in bringing proceedings.
- Next, as the General Court essentially stated in paragraphs 22 to 25 of the judgment under appeal, Article 55(1)(a) of the regulation provides that an application for a declaration of invalidity based on an absolute ground for invalidity may be submitted by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which has the capacity in its own name to sue and be sued, whereas Article 55(1)(b) and (c) of the regulation, concerning applications for a declaration of invalidity based on a relative ground for invalidity, reserves the right to make such an application to certain specific persons who have an interest in bringing proceedings. The General Court rightly found that it is apparent from the scheme of that article that the legislature intended to restrict the group of persons able to apply for a declaration of invalidity in the latter case, but not in the former.
- Finally, the General Court was also correct in stating, in essence, in paragraph 26 of the judgment under appeal, that, whereas relative grounds for refusal of registration protect the interests of proprietors of certain earlier rights, the absolute grounds for refusal of registration aim to protect the general interest underlying them, which explains why Article 55(1)(a) of the regulation does not require the applicant to show an interest in bringing proceedings.
- Moreover, there is no basis for Lancôme's claim that Article 55(1)(a) of the regulation must be interpreted as requiring there to be an actual or potential economic interest in cancellation of a contested mark in order for it to be possible to apply to OHIM for a declaration of invalidity of that mark.
- First, contrary to Lancôme's claim, such an interpretation is not borne out by the reference made in Article 55(1)(a) of the regulation to groups or bodies set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing them have the capacity to sue and be sued. That list, which also contains consumers to whom an economic interest such as the one described by Lancôme cannot generally be attributed, seeks merely to include, on the list of persons who may apply to OHIM for a declaration of invalidity under that provision, groups and bodies of that nature which, although they have the capacity to bring proceedings in accordance with the law governing them, do not have legal personality.
- Second, such an interpretation does not follow from Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, to which Lancôme refers. In paragraph 25 of that judgment, the Court held that the general interest requires that descriptive signs or indications relating to the goods or services in respect of which registration is sought may be freely used by all. It can be inferred from this that the general interest underlying the ground for refusal of registration of a mark because of its descriptiveness is not exclusively the interest of the trade'mark applicant's or proprietor's competitors (who may be subject to some form of constraint and who, on that basis, have an actual or potential economic interest in having the contested mark declared invalid), but a common interest.
- It is apparent from the foregoing that the arguments put forward by Lancôme in support of the first part of the first ground of appeal are not founded and that that part of the ground of appeal must therefore be rejected.
The second part of the first ground of appeal, alleging that the role of the legal profession is incompatible with the right of a law firm to apply to OHIM for a declaration of invalidity of a mark, on its own account and in its own name
Arguments of the parties
- Lancôme argues that, even if the Court adopts a different interpretation of Article 55(1)(a) of the regulation from its own, the judgment under appeal must be set aside, in any event, since the right of a law firm to file an application for a declaration of invalidity of a Community trade mark, on its own account and in its own name, is incompatible with the role of the legal profession, as it is recognised throughout the European Union.
- Under European Union law, the role of the legal profession has always been to collaborate in the administration of justice. Article 19 of the Statute of the Court of Justice is based on that conception of the profession of lawyer, which is also apparent from the case'law and, in particular, from Case 155/79 AM & S Europe v Commission [1982] ECR 1575, paragraph 24.
- OHIM maintains that the second part of the first ground of appeal is inadmissible under Article 113(2) of the Rules of Procedure of the Court of Justice, on the ground that the question was not raised at first instance as to whether it is compatible with their role for lawyers to act as applicants before OHIM.
Findings of the Court
- Although presented as one part of the ground of appeal alleging infringement of Article 55(1)(a) of the regulation, it should be noted that the second part of that ground of appeal is not based on Article 55(1)(a), but on other matters of law independent of that provision.
- First, it is apparent from the very wording of the arguments put forward in its support that the second part of the ground of appeal was raised by Lancôme in case the Court did not adopt its interpretation of Article 55(1)(a) of the regulation, since, in Lancôme's view, the judgment under appeal should be set aside 'in any event', for reasons other than the misinterpretation which it alleges.
- Second, the reasons put forward, which concern the legal profession, are not related to Article 55(1)(a) of the regulation. Nor does the regulation contain any rules applicable to the exercise of that profession, as such rules are in principle, in the absence of specific rules of European Union law in the field, established by each Member State (see, to that effect, Case C-3/95 Reisebüro Broede [1996] ECR I-6511, paragraph 37, and Case C-309/99 Wouters and Others [2002] ECR I-1577, paragraph 99).
- Consequently, the second part of the first ground of appeal amounts, in reality, to a separate ground of appeal from that alleging infringement of Article 55(1)(a) of the regulation.
- However, that plea was not raised before the General Court and, since it does not relate to the admissibility of a court action but to an application made to OHIM, it does not involve a matter of public interest which the General Court should have examined of its own motion.
- A ground of appeal of that nature is inadmissible since, in an appeal, the jurisdiction of the Court of Justice is confined to review of the findings of law on the pleas argued before the General Court (see, to that effect, inter alia, Case C-266/05 P Sison v Council [2007] ECR I-1233, paragraph 95 and the case'law cited).
- As a result, the second part of the first ground of appeal must be disregarded and, consequently, the first ground of appeal must be rejected.
The second ground of appeal, alleging infringement of Article 7(1)(c) of the regulation
Arguments of the parties
- By its second ground of appeal, Lancôme complains that the General Court applied the wrong criteria in its assessment of the sign 'COLOR EDITION' as an association of terms.
- Lancôme submits that, according to the case'law, for a mark which is made up in that way to be regarded as descriptive, it is necessary to verify whether the terms chosen and their association are known and used habitually in the everyday language of the target public. In finding that a mark, which is made up of individual descriptive elements, is itself descriptive unless there is a perceptible difference between the mark applied for and the mere sum of its parts, the General Court infringed the principle set out in Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251. In accordance with that principle, what the General Court should actually have done was research whether there was a perceptible difference between the word combination and the everyday language of the relevant class of consumers to designate the goods and services or their essential characteristics.
- In addition, the General Court's assessment was not based on any matters of fact concerning the language of the target public.
- OHIM contends, in essence, that, by submitting that a sign is descriptive only when it is known and used habitually in the everyday language of the target public, Lancôme failed to have regard to the fundamental difference which exists between Article 7(1)(d) and Article 7(1)(c) of the regulation. In order for the latter to apply, it is irrelevant whether the disputed word combination is known and used habitually in the everyday language of the target consumer, since that provision also applies to signs which are capable of being commonly used in the future for the presentation of the goods or services in question.
- Thus, in Procter & Gamble v OHIM, the Court of Justice confined itself to checking whether the grammatical construction of the word combination 'baby-dry' rendered the future use of that word combination possible. In OHIM's view, the examination of the descriptive character of the sign 'COLOR EDITION' carried out by the General Court was also consistent with the case'law subsequent to that judgment.
- Furthermore, in complaining that the General Court did not base its decision on any facts, Lancôme is effectively seeking to call into question the assessment of the facts carried out by that court, with the result that that part of the ground of appeal is inadmissible. That part of the ground of appeal is, in addition, manifestly unfounded since the question as to whether the consumers of cosmetic preparations currently use an expression such as 'color edition' in everyday language is irrelevant.
Findings of the Court
- It is settled case'law that, as a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Article 7(1)(c) of the regulation. However, such a combination may not be descriptive for the purposes of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the combination of those elements (see Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraphs 98 and 99; Case C-265/00 CampinaMelkunie [2007] ECR I-1699, paragraphs 39 and 40; and Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, paragraphs 77 and 78).
- Thus, a mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of those characteristics, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (see Koninklijke KPN Nederland, paragraph 100, and Campina Melkunie, paragraph 41).
- In the present case, after having found that the sign 'COLOR EDITION' was composed exclusively of indications which may serve to designate certain characteristics of the goods in question, the General Court held, in paragraph 49 of the judgment under appeal, that the association of the terms 'color' and 'edition' was not unusual but a normal construction in light of the lexical rules of the English language and that the mark in respect of which registration had been sought did not therefore create, for the target public, an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed to alter its meaning or scope.
- In the light of the case'law cited in paragraphs 61 and 62 above, and as pointed out by the Advocate General in point 98 of his Opinion, that reasoning is not vitiated by any error of law.
- Consequently, the claims made by Lancôme in the context of the second ground of appeal are not founded and that ground of appeal must therefore be dismissed.
- It results from all the above considerations that the appeal must be dismissed.
Costs
- Under Article 69(2) of the Rules of Procedure, which is applicable to the procedure on appeal under Article 118 of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since OHIM has applied for costs and Lancôme has been unsuccessful, Lancôme must be ordered to pay the costs.
On those grounds, the Court (Second Chamber) hereby:
1. Dismisses the appeal;
2. Orders Lancôme parfums et beauté & Cie SNC to pay the costs.
[Signatures]
* Language of the case: French.
