Grundig Multimedia v OHIM (GentleCare) (Judgment) [2015] EUECJ T-188/14 (21 January 2015)

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(Community trade mark — Application for Community word mark GentleCare — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Equal treatment)

Grundig Multimedia AG, established in Stansstad (Switzerland), represented by S. Walter and M. Neuner, lawyers,

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

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 24 January 2014 (Case R 739/2013-5) confirming rejection of the application for registration of the word sign GentleCare as a Community trade mark,

composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,

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 7 August 2012, Grundig Multimedia BV filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in Class 7 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

‘Engines, electrical engines, their parts and fittings and accessories other than for land vehicles (including parts), electric door openers-closers used in land vehicles (included in this class); alternators, generators, generators of electricity, generators working with solar energy; machines for manufacturing, treating, scotching, tentering or washing fabrics, sewing machines and industrial robots with the same function as the abovementioned machines; pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry machines/dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts.’

4 On 19 February 2013, the transfer of the application for a Community trade mark between Grundig Multimedia BV and the applicant, Grundig Multimedia AG, was registered by OHIM.

5 By decision of 21 February 2013, the examiner rejected the application for a Community trade mark with respect to the following goods:

‘Machines for manufacturing, treating, scotching, tentering or washing fabrics, sewing machines and industrial robots with the same functions as the machines referred to above; washing machines (laundry/dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts.’

6 The rejection was based on Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

7 On 19 April 2013, the applicant brought an appeal against the decision of 21 February 2013.

8 By decision of 24 January 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal on the ground that the trade mark applied for was descriptive and devoid of any distinctive character.

9 Regarding the descriptive character of the trade mark applied for, the Board of Appeal relied, in essence, on the following reasoning: the goods at issue are aimed partly at professionals and partly at the general public; in both cases, consumers will normally be informed and reasonably attentive and circumspect; the level of attention will even be higher than average, including for average consumers, as a result of the cost and relative complexity of the goods in question (paragraph 9 of the contested decision); the relevant public consists of the English-speaking consumer in the European Union (paragraph 9 of the contested decision); the trade mark consists of the expression ‘gentle care’, which is composed of two words the meaning of which is clear in English and which, taken together, mean ‘a soft, not harsh or strong activity involved in maintaining something in good condition’; concerning the goods at issue, which are machines, the fact that their primary function, which consists in manufacturing, treating and elaborating fabrics, as well as cleaning fabrics, dishes and floors, is carried out in a gentle manner may have great significance for the consumer (paragraph 10 of the contested decision); it is sufficient that the characteristics described by the expression ‘gentle care’ be desirable with respect to the goods at issue for the trade mark to be refused registration; that is the case with regard to the trade mark applied for in respect of which the primary functions of the machines it designates are enhanced by the fact that they are carried out in a gentle manner (paragraph 11 of the contested decision); the expression ‘gentle care’ will therefore not be perceived by the relevant public as anything other than describing a characteristic of the goods at issue (paragraph 12 of the contested decision).

10 The Board of Appeal also specified, for each type of goods in respect of which registration was sought, how the expression ‘gentle care’ could be perceived as descriptive of a characteristic of the goods at issue. In particular, it held that the machines at issue would be expected to allow gentle treatment of the materials produced, processed or cared for by them, namely fabrics, dishes, carpets and floors or parquets (paragraph 14 of the contested decision).

11 In conclusion, still regarding the descriptive character of the trade mark applied for, the Board of Appeal stated that the sign at issue contained direct information concerning the way the goods at issue function and that, as a result, the connection between that sign and those goods was sufficiently close for Article 7(1)(c) of Regulation No 207/2009 to apply (paragraph 18 of the contested decision).

12 Regarding the absence of distinctive character of the trade mark applied for, the Board of Appeal relied, in essence, on the fact that the trade mark applied for was devoid of distinctive character as a result of its descriptive character (paragraph 20 of the contested decision).

13 The Board of Appeal added that the applicant’s argument based on the registration by OHIM of trade marks similar to the trade mark applied for was not capable of changing its assessment. According to the Board of Appeal, respect for the principle of equal treatment must be reconciled with respect for the principle of legality, in accordance with which no one may invoke, in his favour, irregularities committed in favour of others (paragraph 23 of the contested decision).

– remit the application for registration to OHIM in order for the procedure for registration to continue;

– order OHIM to pay the costs, including those incurred before the Board of Appeal.

16 In support of its action, the applicant raises two pleas in law, alleging, respectively, an infringement of Article 7(1)(c) of Regulation No 207/2009 and an infringement of Article 7(1)(b) of that regulation.

17 Regarding the first plea in law, it should be noted that, under Article 7(1)(c) of Regulation No 207/2009, 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 may not be registered.

18 Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31; and 19 April 2007 in OHIM v Celltech, C‑273/05 P, ECR, EU:C:2007:224, paragraph 75).

19 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (judgment of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraph 25).

20 The plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009 must be examined in the light of those principles.

21 In the present case, the applicant states that the expression ‘gentle care’ does not correspond to any expression in the English language and that it is a fanciful expression. It also submits that the expression ‘gentle care’ cannot be regarded as designating directly one of the characteristics of the goods at issue. Those goods are machines. According to the applicant, both the word ‘gentle’ and the word ‘care’ usually refer to human acts or behaviour.

22 In that regard, it must, first, be noted that the Board of Appeal, in paragraph 9 of the contested decision, correctly identified the English-speaking public, whether the general public or professionals, as the relevant public, since the two words of the trade mark applied for are English words.

23 In the second place, the meaning of each of the words making up the expression ‘gentle care’ is clear. Thus the adjective ‘gentle’ refers in particular, to somebody or something which is not strong or violent. The word ‘care’ means, in particular, the contribution of what is necessary to health, well-being, or the maintenance or protection of somebody or something. In addition, the juxtaposition of those two words is not particularly surprising or unusual. Accordingly, the meaning of the expression, taken together, is itself clear for the relevant public, since that expression refers, as the Board of Appeal correctly held in paragraph 10 of the contested decision, to a ‘soft, not harsh or strong activity involved in maintaining something in good condition’.

24 In the third place, although the machines at issue fulfil different functions relating to manufacture, processing or maintenance, those functions are performed in relation to specific materials or objects.

25 Whether textiles, dishes, carpets or internal floors are at issue, it is commonly expected, as the Board of Appeal correctly pointed out in paragraph 14 of the contested decision, that those materials or objects, both at the stage of their manufacture and their maintenance, are the subject of particular ‘care’ requiring a certain gentleness or attention.

26 Thus, the general public or, as the case may be, professionals in the textile sector will expect the machines at issue to be capable of ensuring such care.

27 As a result, the Board of Appeal was correct to hold, in paragraph 18 of the contested decision, that the expression ‘gentle care’ contained for the relevant public direct information concerning the way the goods at issue function and that, consequently, the connection between that sign and those goods was sufficiently close for Article 7(1)(c) of Regulation No 207/2009 to apply.

28 The above conclusion is not called in question by the other arguments put forward by the applicant.

29 First, the applicant contends that the expression ‘gentle care’ has no direct connection with the fundamental purposes of each of the types of goods at issue.

30 However, it follows from paragraphs 24 to 26 above that a direct connection between the expression ‘gentle care’ and the goods at issue has been established.

31 Next, it is irrelevant whether the characteristics of the goods or services which are capable of being described by a sign are commercially essential or ancillary. The wording of Article 7(1)(c) of Regulation No 207/2009 does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see, by analogy, the judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 102).

33 Secondly, the applicant claims that, in the sector of machines and apparatus, it is common for manufacturers to use a combination of trade marks to designate their goods, the first trade mark being the name of the manufacturer and the other referring to the corresponding line of goods. That other trade mark consists thus, according to the applicant, of a combination of suggestive or allusive terms such as the expression ‘gentle care’. Thus, in this sector, consumers, being familiar with those practices, would not attempt to identify a specific and descriptive connection between such combinations and the goods they designate.

34 In that regard, it should first of all be pointed out that the claim that manufacturers of machines and apparatus generally use a combination of trade marks to designate their goods, the first trade mark being the name of the manufacturer, is in no way established by the applicant.

35 Moreover, as was stated in paragraph 27 above, the expression ‘gentle care’ is not allusive, but, on the contrary, contains direct information about the way the goods at issue operate.

37 Thirdly, the applicant relies on the fact that the expression ‘gentle care’ is not included in any dictionary.

38 However, it is apparent from the case-law that OHIM is not obliged to prove that the sign for which registration as a Community trade mark is sought is included in dictionaries. The question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of the relevant EU legislation, as interpreted by the Courts of the Union. Therefore, it is sufficient that the Board of Appeal applied the descriptiveness test, as interpreted by the case-law, in order to reach its decision and it was not obliged to justify its action by the production of evidence (judgment of 23 October 2007 in BORCO-Marken-Import Matthiesen v OHIM (Caipi), T‑405/04, EU:T:2007:315, paragraph 42).

40 Fourthly, the applicant considers that the Board of Appeal infringed the principle of equality by refusing to register the mark applied for, although it has granted registration of similar or comparable marks.

41 In the light of the principles of equal treatment and sound administration, it has indeed been held that OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 74).

42 However, those principles must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment in Agencja Wydawnicza Technopol v OHIM, paragraph 41 above, EU:C:2011:139, paragraphs 75 and 76).

43 Moreover, for reasons of legal certainty and sound administration, the examination of any 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 (judgment in Agencja Wydawnicza Technopol v OHIM, paragraph 41 above, EU:C:2011:139, paragraph 77).

44 In this case, it is apparent from the contested decision that the Board of Appeal performed a full and specific examination of the trade mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other claims that that examination led the Board of Appeal to find, correctly, that the absolute ground for refusal to register referred to in Article 7(1)(c) of Regulation No 207/2009 existed and thus precluded registration of the trade mark applied for. Since the examination of the sign at issue in the light of that provision could not, in itself, lead to a different conclusion, the applicant’s claims of a failure to take into consideration the registration of identical trade marks cannot succeed. In order to cast doubt on the conclusion that the registration of the trade mark applied for is incompatible with Regulation No 207/2009, the applicant may thus not properly rely on a previous decision of OHIM.

45 It follows from the foregoing that the first plea in law invoked by the applicant must be rejected, since the Board of Appeal correctly held that the sign at issue was descriptive.

46 As follows from Article 7(1) of Regulation No 207/2009, the application of one of the absolute grounds for refusal suffices for the sign at issue not to be registrable as a Community trade mark (judgments of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29, and 9 July 2008 in Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, EU:T:2008:265, paragraph 49).

47 Consequently, since, for the goods at issue, the sign submitted for registration is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 and that by itself justifies the contested refusal to register at issue, it is not necessary to examine the second plea in law, alleging an infringement of Article 7(1)(b) of that regulation (Order of 13 February 2008 in Indorata-Serviços e Gestão v OHIM, C‑212/07 P, EU:C:2008:83, paragraphs 27 and 28).

48 It follows from all the foregoing that the action must be dismissed, without there being any need to adjudicate on the admissibility of the applicant’s claim that the Court remit the application for registration at issue to OHIM in order for the procedure for registration to continue.

49 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. 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) >> Grundig Multimedia v OHIM (GentleCare) (Judgment) [2015] EUECJ T-188/14 (21 January 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T18814.html Cite as: ECLI:EU:T:2015:34, EU:T:2015:34, [2015] EUECJ T-188/14

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