Delphi Technologies, Inc v OHIM [2013] EUECJ T-515/11

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(Community trade mark - Application for a Community word mark INNOVATION FOR THE REAL WORLD - Absolute ground for refusal - Lack of distinctive character - Article 7(1)(b) of Regulation (EC) No 207/2009)

Delphi Technologies, Inc., established in Wilmington, Delaware (United States), represented by C. Albrecht and J. Heumann, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 June 2011 (Case R 1967/2010-2), concerning an application for registration of the word mark INNOVATION FOR THE REAL WORLD as a Community trade mark,

composed of H. Kanninen (Rapporteur), President, S. Soldevila Fragoso and G. Berardis, Judges,

having regard to the application lodged at the Registry of the General Court on 27 September 2011,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,

1 On 17 July 2008, the applicant, Delphi Technologies, Inc., filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark for which registration was sought is the word mark INNOVATION FOR THE REAL WORLD.

3 The goods and services in respect of which registration of the mark was sought are in Classes 7, 9, 10 and 12 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, after the restriction made during the proceedings before OHIM, for each of those classes, to the following description:

- Class 7 - ‘Motor vehicle products, namely fuel management systems and components, ignition systems and components, and emission control systems and components’;

- Class 9 - ‘GPS navigation systems, radios, audio and sound systems and parts and accessories’;

- Class 10 - ‘Medical apparatus and instruments for vital signs monitoring, for controlling medical infusions, and for the restoration and improvement of the respiratory function’;

- Class 12 - ‘Motor vehicle products, namely braking systems and components, suspension systems and components, steering systems and components, powertrain suspension mounting systems, air bags, seat belts, shock absorbers and drive units for land vehicles’.

4 By letter of 27 March 2009, the examiner raised objections to the registrability of the mark applied for on the ground that the mark is devoid of distinctive character.

5 By letter of 17 July 2009, in reply to the examiner’s letter of 27 March 2009, the applicant submitted, in essence, that the mark applied for was inherently distinctive, on the ground that the word ‘WORLD’ was a vague term, that the expression ‘REAL WORLD’ was not descriptive, promotional or laudatory, and that several similar marks had already been registered.

6 By decision of 25 August 2010, the examiner, pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, refused to register the mark applied for in respect of the goods referred to in paragraph 3 above on the ground that that mark was devoid of distinctive character.

7 On 8 October 2010, the applicant lodged an appeal with OHIM against the examiner’s decision.

8 By decision of 23 June 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal. First, the Board of Appeal defined the relevant public as being composed of English-speaking professionals, for the goods in Classes 7, 10 and 12, and the English-speaking general public, for the goods in Class 9. It next pointed out that, in the light of the nature of the goods in question, the awareness of the relevant public - professionals or general public - was ‘relatively high’. It explained, however, that, despite the generally high level of awareness of the general public, that awareness could be relatively low when it came to promotional indications, which well-informed consumers did not see as decisive. The Board of Appeal then stated that the expression ‘innovation for the real world’ would be understood by the relevant public, without interpretation, as a laudatory message that the goods delivered by the applicant were innovations for the real world. The meaning of that expression was even clearer since the goods concerned pertained to a market where innovation is essential. According to the Board of Appeal, the mark applied for was therefore not an indication of the commercial origin of the goods. Furthermore, nothing in the expression ‘innovation for the real world’, beyond its promotional meaning, would enable the relevant public to memorise the mark applied for easily and instantly as a distinctive mark. In that regard, the Board of Appeal pointed out that the mark applied for was not a play on words and was not imaginative, surprising or unexpected. According to the Board of Appeal, that analysis did not contradict the judgment in Case C-398/08 P Audi v OHIM [2010] ECR I-535, in so far as, in the present case, the mark applied for was not rejected because it was a promotional slogan, but because it was a banal slogan. Finally, the Board of Appeal explained that, in the Audi v OHIM case, the slogan was widely known as a consequence of its use over many years, which was not the case here.

11 The applicant essentially raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. The plea is divided into three parts. First, the applicant claims that the Board of Appeal erred in law in the application of Article 7(1)(b) of that regulation. Secondly, the applicant claims that the Board of Appeal did not take into account the use and the renown of the mark INNOVATION FOR THE REAL WORLD. Thirdly, the Board of Appeal did not take into account the fact that that marks identical or similar to the mark applied for have already been registered at European Union level and in certain Member States.

12 The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character.

14 According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character may not be registered.

15 For a mark to possess distinctive character, within the meaning of that article, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 32; Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 34; Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 66; and Audi v OHIM, cited in paragraph 8 above, paragraph 33), in order to enable the consumer who acquired the goods designated 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-130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II-5179, paragraph 18, and Case T-441/05 IVG Immobilien v OHIM (I) [2007] ECR II-1937, paragraph 39).

16 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception which the relevant public has of those goods or services (Procter & Gamble v OHIM, cited in paragraph 15 above, paragraph 33, and Audi v OHIM, cited in paragraph 8 above, paragraph 34).

17 As regards marks which consist of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark, their registration is not excluded as such by virtue of such use (Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECR I-10031, paragraph 41, and Audi v OHIM, cited in paragraph 8 above, paragraph 35).

18 As regards the assessment of the distinctive character of such marks, the Court of Justice has already held that it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (OHIM v Erpo, cited in paragraph 17 above, paragraphs 32 and 44, and Audi v OHIM, cited in paragraph 8 above, paragraph 36).

19 It is in the light of those considerations that it must be examined whether, as the applicant maintains, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 in finding that the mark applied for was devoid of distinctive character.

20 First, with respect to the determination of the relevant public, it must be pointed out that the sign INNOVATION FOR THE REAL WORLD is made up of words from the English language the combination of which has a meaning for an English-speaking public or a public which has sufficient knowledge of the English language. Therefore, the Board of Appeal correctly considered that the public concerned was English-speaking, a fact which is not disputed by the applicant.

21 Nor does the applicant dispute the Board of Appeal’s finding that the goods in Classes 7 and 12 are directed at professionals in the automobile industry and those in Class 10 are directed at medical professionals.

22 By contrast, the applicant disputes the Board of Appeal’s finding that the goods in Class 9 are aimed at the general public.

23 It must be pointed out that, according to the case-law, the goods in Class 9, such as radios and navigation instruments and installation apparatus for receiving, recording and displaying sound are everyday consumer goods for which the relevant public is the average reasonably well informed and circumspect consumer (see, to that effect, judgment of 20 September 2007 in Case T-461/04 Imagination Technologies v OHIM (PURE DIGITAL), not published in the ECR, paragraph 23, and judgment of 15 December 2009 in Case T-476/08 Media-Saturn v OHIM (BEST BUY), not published in the ECR, paragraph 22).

24 That finding cannot be undermined by the applicant’s claim that the goods in Class 9 are complex. It has not been demonstrated by the applicant that all GPS (Global Positioning System) navigation systems, radios, audio and sound systems require, due to their complexity, the assistance of a technician.

25 In any event, assuming that the Board of Appeal erred in not taking professionals into account for the goods in Class 9, such an error is of no consequence, because it is apparent from the case-law that, despite a generally high level of awareness of a general public composed of professionals, that level can be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (see, to that effect, REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 15 above, paragraph 24). As the Board of Appeal noted, without being challenged by the applicant, the mark applied for is a promotional slogan.

26 In that regard, it must be noted that, contrary to the applicant’s contention, OHIM v Erpo, cited in paragraph 17 above, and Audi v OHIM, cited in paragraph 8 above, which were delivered after REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 15 above, as OHIM submits, did not cast doubt on that judgment in this respect.

27 It is apparent from REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 15 above, that a mark’s promotional indications are not seen as decisive by well-informed consumers. By contrast, it is apparent from Audi v OHIM, cited in paragraph 8 above, paragraph 45, that where a word mark can be perceived both as a promotional formula and as an indication of the commercial origin of goods or services, this does not exclude that that mark may be regarded as having distinctive character. Accordingly, Audi v OHIM does not contradict REAL PEOPLE, REAL SOLUTIONS. It is apparent from REAL PEOPLE, REAL SOLUTIONS that the level of awareness of well-informed consumers is low when the mark gives purely promotional indications and not when the mark is both a promotional formula and an indication of the commercial origin of the goods or services concerned.

28 Secondly, it is appropriate to consider whether the Board of Appeal correctly assessed the meaning of the mark applied for in order to reach the conclusion that the mark was devoid of any distinctive character with regard to the goods at issue and from the point of view of the relevant public.

29 As the case-law has acknowledged, in the case of compound word signs, the relevant meaning, established on the basis of all their constituent elements and not only one of them, must be taken into account (Case T-28/06 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN) [2007] ECR II-4413, paragraph 32). Thus, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character (Eurohypo v OHIM, cited in paragraph 15 above, paragraph 41). In other words, in order to assess whether or not a trade mark lacks distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not start by examining each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see, to that effect, Case C-238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 82, and Case T-157/08 Paroc v OHIM (INSULATE FOR LIFE) [2011] ECR II-137, paragraph 50).

30 The sign applied for is composed of five common English words, namely ‘innovation’, ‘for’, ‘the’, ‘real’ and ‘world’. As pointed out by the Board of Appeal, the word sign INNOVATION FOR THE REAL WORLD, considered as a whole, is instantly apparent to the relevant English-speaking public as meaning that the goods covered by the mark applied for are innovations for the real world.

31 It must be stated that the applicant has not succeeded in refuting the Board of Appeal’s finding that the expression ‘innovation for the real world’ may mean that the goods covered are innovations for the real world. It simply states that the expression ‘for the real world’ may have several different meanings, without substantiating this statement. However, it should be recalled that, for registration to be refused, it is sufficient that a word sign, or at least one of its possible meanings, designates a characteristic of the goods or services concerned (see, to that effect, Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 32, and judgment of 29 April 2010 in Case T-586/08 Kerma v OHIM (BIOPIETRA), not published in the ECR, and the case-law applicable by analogy in the present case concerning Article 7(1)(c) of Regulation No 207/2009).

32 Accordingly, the Board of Appeal was justified in finding that, in respect of the goods at issue, the relevant public would perceive the sign INNOVATION FOR THE REAL WORLD, directly and without further consideration, as an allusion to innovative goods and not as an indication of the commercial origin of those goods.

33 It must be added that, even as a promotional slogan, the sign INNOVATION FOR THE REAL WORLD cannot be regarded as having distinctive character.

34 It is apparent from the case-law that, while it is true that a mark possesses distinctive character only in so far as it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character. The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services (Audi v OHIM, cited in paragraph 8 above, paragraphs 44 and 45).

35 The Court has therefore considered that it is not sufficient for a finding that the mark applied for will not be perceived by the relevant public as an indication of the commercial origin of the goods and services in question merely to highlight the fact that that mark consists of and is understood as a promotional formula (Audi v OHIM, cited in paragraph 8 above, paragraph 46).

36 It follows that a mark consisting of an advertising slogan must be regarded as devoid of distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, and according to settled case-law, 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 or services in question (see, to that effect, REAL PEOPLE, REAL SOLUTIONS, cited in paragraph 15 above, paragraph 20, and Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 66).

37 In the present case, as the Board of Appeal pointed out, the sign INNOVATION FOR THE REAL WORLD cannot be perceived other than as a promotional message. It is not sufficiently original or resonant to require at least some interpretation, thought or analysis on the part of the relevant public, as that public is led to associate that sign immediately with goods which are capable of being marketed by any undertaking offering innovative products.

38 As expressly stated by the Board of Appeal, the sign INNOVATION FOR THE REAL WORLD does not constitute a play on words and contains no imaginative, surprising or unexpected element so as to confer on it, in the minds of the relevant public, a distinctive character. Accordingly, the sign applied for is in the form of a classic slogan, devoid of elements which could, apart from its promotional function, enable the average consumer concerned easily and immediately to memorise it as a trade mark for the goods referred to (see, to that effect, Audi v OHIM, cited in paragraph 8 above, paragraphs 44, 45 and 56 to 59).

39 None of the other arguments put forward by the applicant for the purposes of demonstrating the originality or the resonance of the sign INNOVATION FOR THE REAL WORLD is capable of undermining that finding.

40 The applicant cannot maintain, without substantiating its claim, that the use of the word ‘innovation’ gives the sign a certain originality or resonance in so far as the innovation refers to a process or a feature resulting from a process and not to the innovative goods themselves. There is nothing to suggest that the relevant public would not immediately make the association between the word ‘innovation’ and the goods covered by the mark applied for, in particular in the light of the technological nature of those goods. Furthermore, in its pleadings, the applicant admits that the goods covered by the mark applied for could be the result of innovations or innovative processes. In addition, it should be noted that, as is apparent from the Oxford English Dictionary cited by the Board of Appeal, the word ‘innovation’ is defined as both the action of innovating and the product of that action.

41 Furthermore, the applicant claims that the expression ‘real world’ can have many meanings, which speaks for the originality and resonance of the mark applied for. As pointed out by the Board of Appeal, according to the Oxford English Dictionary the expression ‘real world’ may be defined as ‘the world as it actually exists; the existing state of things, as opposed to one that is imaginary, simulated, or theoretical’. That meaning is not disputed by the applicant. The applicant merely asserts that the word ‘world’ can be used in different ways, in geography, politics, literature or religion. In the light of the nature of the goods covered by the mark applied for, the expression ‘real world’ cannot be perceived other than in the general sense of ‘real world’ or ‘reality’, as noted by the Board of Appeal. As regards the word ‘real’, the applicant merely claims that it can be understood as the opposite of ‘imaginary’ or ‘theoretical’. However, as is apparent from the definition of the expression ‘real world’ as referred to above, both the words ‘imaginary’ and ‘theoretical’ are defined in contrast to ‘real’. In those circumstances, the applicant cannot claim that the expression ‘real world’ has many different meanings so as to confer on the sign applied for a certain originality or resonance.

42 Finally, the applicant claims that the combination of the word ‘innovation’ with the expression ‘real world’ also demonstrates a certain originality or resonance in the mark applied for. In support of that argument, the applicant limits itself to claiming that the relevant public will wonder ‘whether there are also innovations for an unreal world or a fictitious world’ and adds that that public will ‘immediately know that it cannot be differentiated between innovations for a real world and those for an unreal world’. It must however be noted that the applicant does not substantiate that claim. As observed by the Board of Appeal, the addition of the expression ‘for the real world’ to the word ‘innovation’ only reinforces the alleged positive qualities of the goods at issue.

43 The Board of Appeal did not therefore make any error of assessment in finding that, taken as a whole, the sign INNOVATION FOR THE REAL WORLD was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

44 However, it is still necessary to deal with the applicant’s claim that the Board of Appeal misconstrued the case-law of the Court of Justice concerning the distinctive character of slogans, in particular OHIM v Erpo, cited in paragraph 17 above, and Audi v OHIM, cited in paragraph 8 above.

45 By this complaint the applicant seeks to argue that the Board of Appeal, in its assessment of the distinctive character of the sign INNOVATION FOR THE REAL WORLD, applied stricter criteria than those applicable to other types of sign, contrary to the case-law of the Court of Justice concerning the distinctive character of slogans.

46 That argument cannot be accepted. First, contrary to what the applicant claims, the contested decision does not refer only to the Court of Justice’s decisions prior to OHIM v Erpo, cited in paragraph 17 above, and Audi v OHIM, cited in paragraph 8 above. In fact, not only is OHIM v Erpo cited in paragraphs 13 and 14 of the contested decision but, moreover, paragraphs 27 and 28 of the contested decision are based on a comparative analysis of the reasoning of the Board of Appeal in the present case and that of the Court of Justice in Audi v OHIM.

47 Secondly, the applicant cannot infer from the citation of the Court of Justice’s decisions on the registration of three-dimensional marks that the Board of Appeal applied stricter criteria for slogans than for other signs. Even though paragraphs 12 and 14 of the contested decision, relied on by the applicant, refer to Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, which concern three-dimensional marks, it is clear that those paragraphs also refer to OHIM v Erpo, which concerns a word mark and which the applicant submits should be applied in the present case.

48 According to paragraph 34 of OHIM v Erpo, cited in paragraph 17 above, while the criteria for assessing distinctive character are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctive character of marks in certain categories than of those in other categories. In paragraph 35 of that judgment, the Court of Justice states that the possibility cannot be excluded that that case-law is also relevant to word marks consisting of advertising slogans.

49 Thirdly, the applicant claims that in paragraph 14 of the contested decision the Board of Appeal wrongly establishes a hierarchy between the ‘promotional function’ of a slogan and its ‘function to serve as an indication of origin’, by requiring that the ‘promotional function’ be manifestly secondary to the ‘function to serve as an indication of origin’ in order to be able to find that the mark at issue has distinctive character.

50 That argument of the applicant is based on an erroneous reading of the contested decision. First of all, it must be stated that, in paragraph 14 of the contested decision, the Board of Appeal merely reproduces paragraphs 34 and 35 of OHIM v Erpo, cited in paragraph 17 above, which are also cited in paragraphs 37 and 38 of Audi v OHIM, cited in paragraph 8 above, which the applicant submits should be applied in the present case.

51 Next, it cannot be inferred from paragraph 14 of the contested decision that the Board of Appeal took the view that the ‘promotional function’ of a slogan must be manifestly secondary to that of the ‘function to serve as an indication of origin’ of the goods for the mark to be regarded as having a distinctive character. In paragraph 14 of the contested decision, the Board of Appeal notes that it may prove more difficult to establish distinctive character for some categories of marks than for others, and illustrates such a situation by referring to the case of a mark serving a promotional function whose importance is not manifestly secondary to its purported function as a trade mark, namely that of guaranteeing the origin of the product.

52 Contrary to what is claimed by the applicant, paragraph 14 of the contested decision does not therefore disregard Audi v OHIM, cited in paragraph 8 above, from which it is apparent that, in the case where a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services, the fact that that mark is simultaneously understood - perhaps even primarily understood - as a promotional formula has no bearing on its distinctive character.

53 In that regard, nowhere in the contest decision does it appear that the mark applied for was rejected on the ground that it has a ‘promotional function’ which is not manifestly secondary to its ‘function to serve as an indication of origin’ of the goods. In the present case, the Board of Appeal rejected the mark applied for not on the ground that the sign was a promotional slogan, but on the ground that, apart from its promotional meaning, it did not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the goods at issue.

54 Accordingly, the argument that the reasoning of the Court of Justice in Audi v OHIM, cited in paragraph 8 above, should lead the General Court to annul the contested decision must be rejected as unfounded. In paragraph 47 of that judgment, the Court of Justice noted that the mark VORSPRUNG DURCH TECHNIK, which means ‘advance or advantage through technology’, had a distinctive character for the relevant public since, as the General Court had held, that mark could ‘have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered’. However, unlike the mark VORSPRUNG DURCH TECHNIK, the mark applied for, which does not, in this case, make possible the identification of the commercial origin of the services which it covers, has no distinctive character, as has been stated in paragraphs 28 to 43 above (see, to that effect, judgment of 7 September 2011 in Case T-524/09 Meredith v OHIM (BETTER HOMES AND GARDENS), not published in the ECR, paragraph 28).

55 Fourthly, the applicant claims that in Audi v OHIM, cited in paragraph 8 above, the Court of Justice relied secondarily on the renown of the word mark concerned, while, in the present case, the renown of the sign INNOVATION FOR THE REAL WORLD was taken into account as a principal argument.

56 In the present case, it must be noted that the Board of Appeal referred to the lack of renown of the mark applied for as the final argument of its assessment, before concluding that the mark applied for lacked distinctive character. It must also be pointed out that, at paragraph 26 of the contested decision, that is before addressing the renown of the mark applied for, the Board of Appeal had already concluded that that mark would not be perceived by the general public as an indication of the commercial origin of the goods referred to. The applicant cannot therefore maintain that the Board of Appeal ascribed decisive importance to the lack of renown of the mark applied for.

57 It follows from the foregoing that the first part of the plea must be rejected.

58 The applicant claims that the Board of Appeal did not take into account the use on a worldwide basis, since 2008, of the mark applied for and its renown.

60 In so far as, by this line of argument, the applicant claims that the mark applied for has acquired distinctive character due to its use, it must be noted, as OHIM pointed out, that the applicant did not claim, in the course of the proceedings before OHIM, that the sign at issue had acquired distinctive character through use pursuant to Article 7(3) of Regulation No 207/2009.

61 In that regard, it must be pointed out that the reliance, both in ex parte proceedings and in inter partes proceedings, on the distinctive character acquired through use is a point of law which is independent of that of the intrinsic distinctive character of the mark in question. Therefore, unless one of the parties to the proceedings before OHIM relies on the distinctive character acquired by its mark, OHIM is not obliged to consider, of its own motion, the existence of that character (see judgment of 17 October 2006 in Case T-499/04 Hammarplast v OHIM - Steninge Slott (STENINGE SLOTT), not published in the ECR, paragraph 21, and the case-law cited).

62 It must be borne in mind that the purpose of actions before the Court is to review the lawfulness of the decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009 (see, to that effect, judgment of 10 March 2010 in Case T-31/09 Baid v OHIM (LE GOMMAGE DES FACADES), not published in the ECR, paragraphs 39 to 42).

63 Therefore, it is not for the General Court to rule on this issue, which did not form part of the subject-matter of the dispute before the Board of Appeal.

64 In any event, it must be noted out that the evidence provided by the applicant with a view to establishing that it used the mark applied for for many years, as pointed out by OHIM, post-dates the application for registration for the mark applied for. It cannot therefore enable it to be established that that mark had acquired distinctive character through use before that application was lodged (see, to that effect, judgment of 13 April 2011 in Case T-159/10 Air France v OHIM (Shape of a parallelogram), not published in the ECR, paragraph 35).

66 The applicant claims that the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 by failing to take into account marks similar to the mark applied for registered by OHIM or in certain Member States.

67 OHIM contends that the third part of the plea is inadmissible, since the issue raised by the applicant did not form part of the subject-matter of the dispute before the Board of Appeal. Furthermore, OHIM takes the view that Annex A 10 to the application, containing copies of registrations, is inadmissible, as it was not submitted before the Board of Appeal. According to OHIM, this part of the plea should, in any event, be rejected as unfounded.

68 While, having regard to the principles of equal treatment and sound administration, OHIM is obliged, when examining an application for registration of a Community trade mark, to take into account the decisions already taken in respect of similar applications and to consider with particular care whether it should decide in the same way or not (see, in that respect, Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-1541, paragraph 74), the application of those principles must none the less be consistent with the principle of legality.

69 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of each trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That 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, Agencja Wydawnicza Technopol v OHIM, cited in paragraph 68 above, paragraph 77).

70 In the present case, as is apparent from paragraphs 20 to 56 above, the registration of the mark applied for was caught, with regard to the goods for which the registration was sought and the perception of the relevant public, by the ground of refusal set out in Article 7(1)(b) of Regulation No 207/2009. In so far as it has been considered that the Board of Appeal was correct in finding that the registration of the mark applied for in respect of the goods at issue was incompatible with Regulation No 207/2009, the applicant cannot usefully rely on earlier decisions of OHIM in order to undermine that finding.

71 In addition, it must be pointed out that the trade marks cited by the applicant and the goods for which those trade marks were registered are at least partially different from the mark applied for and the goods at issue.

72 As regards the registration in some Member States of marks including the word ‘innovation’, it must be pointed out that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see, to that effect, Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47, and judgment of 21 January 2009 in Case T-399/06 giropay v OHIM (GIROPAY), not published in the ECR, paragraph 46). OHIM and, if appropriate, the European Union judicature are not bound by a decision given in a Member State that the sign in question is registrable as a national mark. Registrations already made in Member States are only factors which, without being given decisive weight, may merely be taken into consideration (Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraphs 70 and 71).

73 It follows that the third part of the plea must be rejected and there is no need to rule on its admissibility, including the admissibility of Annex A 10 to the application. The action must therefore be dismissed in its entirety.

74 Under Article 87(2) 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.

75 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Delphi Technologies, Inc v OHIM [2013] EUECJ T-515/11_J (06 June 2013) URL: http://www.bailii.org/eu/cases/EUECJ/2013/T51511_J.html Cite as: EU:T:2013:300, [2013] EUECJ T-515/11_J, ECLI:EU:T:2013:300

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