Corte di giustizia UE n. 2017/2019

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 3 April 2019 ( * ) (EU trade mark — Application for EU word mark [OSCURATO:PERSONA]. [OSCURATO:PERSONA]. [OSCURATO:PERSONA]. — Absolute ground for refusal — No distinctive character — [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] (EU) 2017/1001) [OSCURATO:PERSONA] T‑555/18, [OSCURATO:PERSONA]., established in Raynham, Massachusetts ([OSCURATO:PERSONA]), represented by B. Bittner and U. Heinrich, lawyers, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by A. Folliard-Monguiral and H. O’Neill, acting as Agents, defendant, ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 18 July 2018 ([OSCURATO:PERSONA] R 463/2018-2), relating to an application for registration of the word sign [OSCURATO:PERSONA]. [OSCURATO:PERSONA]. [OSCURATO:PERSONA]. as an EU trade mark, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of G. [OSCURATO:PERSONA], [OSCURATO:PERSONA], S. [OSCURATO:PERSONA] (Rapporteur) and O. [OSCURATO:PERSONA]-[OSCURATO:PERSONA], [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Coulon, having regard to the application lodged at the [OSCURATO:PERSONA] on 18 September 2018, having regard to the response lodged at the [OSCURATO:PERSONA] on 12 December 2018, 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 [OSCURATO:PERSONA] 106(3) of the Rules of Procedure of the [OSCURATO:PERSONA], gives the following [OSCURATO:PERSONA] 1 On 13 September 2017, the applicant, [OSCURATO:PERSONA]., lodged an application for registration of an EU trade mark with the [OSCURATO:PERSONA] (EUIPO) pursuant to [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), as amended (replaced by [OSCURATO:PERSONA] (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA] of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1)). 2 The mark in respect of which registration was sought is the word sign [OSCURATO:PERSONA]. [OSCURATO:PERSONA]. [OSCURATO:PERSONA]. 3 The goods in respect of which registration was sought are in Class 10 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] 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: ‘Medical devices, namely, surgical devices for diagnostic and surgical use; articulated arms for medical diagnostic and surgical use; probes used concurrently therewith for medical purposes with one or more positionable tools coupled thereto’. 4 By decision of 12 January 2018, the examiner rejected the application for registration of the mark for all the goods set out in paragraph 3 above on the basis of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001. 5 On 12 March 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of [OSCURATO:PERSONA] 2017/1001, against the examiner’s decision. 6 By decision of 18 July 2018 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal. In particular, it found that the goods covered by the mark applied for were intended for a professional public and that, given that the mark was made up of English words, its distinctive character had to be assessed with regard to English-speaking consumers in the [OSCURATO:PERSONA]. It noted that the structure of the mark applied for fully complied with the rules of English grammar and syntax and that it would be understood as meaning ‘See more. [OSCURATO:PERSONA] more. [OSCURATO:PERSONA] more’. It found that there was nothing about the mark applied for that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods covered. It concluded that the mark applied for was devoid of any distinctive character in respect of those goods. Forms of order sought 7 The applicant claims that the [OSCURATO:PERSONA] should: –        annul the contested decision; –        order EUIPO to pay the costs. 8 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the action; –        order the applicant to pay the costs. Law 9 In support of its action, the applicant puts forward a single plea in law, alleging infringement of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001. 10 The applicant claims, in essence, that the mark applied for has distinctive character. It submits that it will not only be perceived as a promotional formula, but will also serve as an indication of the commercial origin of the goods it covers. 11 EUIPO disputes the applicant’s arguments. 12 In that regard, it must be recalled that, under [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. [OSCURATO:PERSONA] 7(2) of that regulation states that [OSCURATO:PERSONA] 7(1) is to apply notwithstanding the fact that the grounds of non‑registrability obtain in only part of the [OSCURATO:PERSONA]. 13 It is clear from settled case‑law that, for a trade mark to possess distinctive character for the purposes of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001, 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 (see judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited). 14 The signs which are devoid of any distinctive character that are referred to in [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001 are deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services covered by that mark, thus enabling the consumer who acquired those goods or services to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS) , T‑479/16, not published, EU:T:2017:441, paragraph 16 and the case-law cited). 15 Distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark (see judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited). 16 As regards 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, registration of such marks is not excluded as such by virtue of such use (see judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29, paragraph 35 and the case-law cited). 17 As regards the assessment of the distinctive character of such marks, according to the case-law, it is inappropriate to apply to them 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). 18 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. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (see judgment of 12 July 2012, [OSCURATO:PERSONA] v OHIM , C‑311/11 P, EU:C:2012:460, paragraph 30 and the case-law cited). 19 Finally, it should be recalled that it is apparent from case-law that a minimum degree of distinctiveness is sufficient to prevent application of the absolute ground for refusal provided for in [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001 (see judgment of 28 June 2017, AROMASENSATIONS , T‑479/16, not published, EU:T:2017:441, paragraph 19 and the case-law cited). 20 It is in the light of those considerations that the [OSCURATO:PERSONA] must examine whether, as the applicant claims, the [OSCURATO:PERSONA] of Appeal infringed [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001 by concluding that the mark applied for was devoid of any distinctive character. 21 In the first place, as regards the definition of the relevant public, the [OSCURATO:PERSONA] of Appeal found that the goods covered by the mark applied for, as set out in paragraph 3 above, were intended for a professional public. It added that, given that the mark applied for was made up of English words, the relevant public comprised English-speaking consumers within the [OSCURATO:PERSONA], namely, at least, the public of the [OSCURATO:PERSONA] in which English is an official language, that is to say, Ireland, Malta and the [OSCURATO:PERSONA]. Those findings of the [OSCURATO:PERSONA] of Appeal, which are, moreover, not disputed by the applicant, must, having regard to the nature of the goods covered and the mark applied for, be upheld. 22 As regards the relevant public’s level of attention, the applicant claims that, given that it is made up of specialists in the health sector, it will display a very high level of attention. In that regard, the [OSCURATO:PERSONA] of Appeal stated that, while the relevant public consists of professionals, it is apparent from settled case-law that the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made of specialists or circumspect consumers (see judgment of 29 January 2015, Blackrock v OHIM ([OSCURATO:PERSONA] I [OSCURATO:PERSONA]) , T‑609/13, not published, EU:T:2015:54, paragraph 27 and the case-law cited). Having regard to the mark applied for, which is, as stated in paragraph 30 below, an ordinary advertising message, it must be held that, notwithstanding the fact that the relevant public consists of specialists in the health sector (see, to that effect, judgment of 18 November 2014, Lumene v OHIM ([OSCURATO:PERSONA]) , T‑484/13, not published, EU:T:2014:963, paragraphs 40 and 41), the [OSCURATO:PERSONA] of Appeal did not commit any error of assessment in finding that the relevant public’s level of attention would be relatively low. The applicant’s argument can only therefore be rejected. 23 In the second place, as regards the [OSCURATO:PERSONA] of Appeal’s assessment of the meaning of the mark applied for, it should be recalled that, in the case of a word mark made up of several elements, the relevant meaning of that mark, established on the basis of all its constituent elements and not only on one of them, must be taken into account. Therefore, the assessment of the distinctive character of such marks cannot be limited to an evaluation of each of their 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. In other words, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine 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 judgment of 7 October 2015, JP [OSCURATO:PERSONA] v OHIM ([OSCURATO:PERSONA]) , T‑642/14, not published, EU:T:2015:753, paragraph 28 and the case-law cited). 24 The applicant claims that the unusual and incorrect structure of the sentences which make up the mark applied for will prevent the relevant public from understanding the precise meaning. According to the applicant, in order to be easily understood, those sentences should have started with a personal pronoun or finished with an exclamation mark and, at the very least, contained an article. 25 In the present case, the mark applied for consists of six common English words, namely the verbs ‘see’, ‘reach’ and ‘treat’ and the adverb ‘more’ repeated three times. That mark is thus made up of three groups of two words separated by full stops. The first word of each of those groups is a verb beginning with a capital letter, namely ‘see’, meaning ‘to discern visually’, ‘reach’, meaning ‘to achieve’ or ‘to arrive at’, and ‘treat’, meaning ‘to give medical care or attention to’, followed by the adverb ‘more’, meaning ‘to a greater extent’. As was rightly held by the [OSCURATO:PERSONA] of Appeal, the mark applied for will therefore be understood as meaning ‘See more. [OSCURATO:PERSONA] more. [OSCURATO:PERSONA] more’. Contrary to what is claimed by the applicant, the fact that the groups of words making up the mark applied for include only a verb and an adverb does not prevent the relevant public from immediately understanding the meaning. In those circumstances, the [OSCURATO:PERSONA] of Appeal’s assessment is free of error and must be confirmed. 26 In the third place, as regards the relevant public’s perception of the mark applied for with regard to the goods covered, the applicant claims that the mark applied for is only weakly connected with the goods covered and conveys a promotional message only subliminally and suggestively. It submits that, given that the sentence structure that makes up the mark applied for is unusual and incorrect, the relevant public will not immediately grasp the promotional message from it. It adds that, as regards the goods at issue, the mark applied for requires an effort of interpretation which cannot be considered to be less than that granted to the mark [OSCURATO:PERSONA]’T FLY, to which the [OSCURATO:PERSONA] attributed distinctive character in the judgment of 22 January 2015, Pro ‑ [OSCURATO:PERSONA] v OHIM — Rexair ([OSCURATO:PERSONA]’T FLY) (T‑133/13, not published, EU:T:2015:46), on the ground that the relevant public could not immediately associate that mark with the goods and services at issue. It maintains that the brevity, originality and conciseness of the mark applied for constitute a key indication for the presumption of its distinctive character. For the applicant, the mark applied for will be memorised by the relevant public in particular because of the presence of several words with an initial capital and the repetition of the element ‘more’. 27 [OSCURATO:PERSONA] of Appeal considered that, beyond its obvious promotional meaning, the mark applied for lacked any elements that might enable the relevant public to memorise it easily and instantly as a distinctive mark in respect of the goods. To the [OSCURATO:PERSONA] of Appeal, the mark applied for merely indicates to the consumer who understands English that those goods make it possible to see more, reach more and treat more, which is directly linked to the function of goods used in the context of medical and surgical diagnosis. It added that the relevant public would merely perceive the mark applied for as a promotional expression with a laudatory meaning as to the function of the goods at issue. 28 In that regard, it 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 still are 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 (judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57). 29 In the present case, it should be recalled, first of all, that, as has been stated in paragraph 25 above, the relevant public will understand, without the slightest reflection, that the mark applied for means ‘See more. [OSCURATO:PERSONA] more. [OSCURATO:PERSONA] more.’, as the [OSCURATO:PERSONA] of Appeal rightly found. Next, it should be noted that the mark applied for lacks any unusual element from the perspective of English syntax and grammar. In that regard, it must be stated that the applicant’s reasoning is unconvincing since, to illustrate the unusual nature of the structure of the mark applied for, it states, in the same paragraph, that it is made up of a sentence containing several words with an initial capital, but also that it consists of three short sentences that contain the word ‘more’. In addition, contrary to what the applicant suggests, it should be noted that concise formulations and the repetition of some of the words making up a trade mark, like the element ‘more’ in the present case, are commonly used in advertising to make slogans stronger and cannot in all cases and, in particular, in the present case, suffice to endow the mark in question with striking features and make it easier to memorise for the relevant public. Moreover, although the applicant relies on the originality of the mark applied for, it fails to state in what way the mark is sufficiently original to be classified as distinctive. Finally, while the applicant refers to the judgment of 22 January 2015, [OSCURATO:PERSONA]’T FLY (T‑133/13, not published, EU:T:2015:46), and although it submits that the mark applied for is only weakly connected with the goods covered, it must be recalled that the mere absence of information about the nature of the goods concerned is not sufficient to make a sign distinctive (see, to that effect, judgment of 30 June 2004, [OSCURATO:PERSONA] v OHIM (Mehr für [OSCURATO:PERSONA]) , T‑281/02, EU:T:2004:198, paragraph 31 and the case-law cited). 30 In those circumstances, the [OSCURATO:PERSONA] of Appeal did not commit any error of assessment in finding that the mark applied for was an ordinary advertising message that was not likely to trigger a cognitive process in the minds of the public concerned and was, accordingly, devoid of any distinctive character. 31 Consequently, the single plea in law must be rejected and the action dismissed in its entirety. Costs 32 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure of the [OSCURATO:PERSONA], 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 incurred by EUIPO, in accordance with the form of order sought by EUIPO. On those grounds, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby: 1. Dismisses the action; 2. [OSCURATO:PERSONA]. to pay the costs. [OSCURATO:PERSONA][OSCURATO:PERSONA] in open court in Luxembourg on 3 April 2019. E. Coulon G. [OSCURATO:PERSONA] * Language of the case: English.