Judgments nº T-157/08 of The General Court, February 08, 2011

• Resolution Date: February 08, 2011
• Issuing Organization: The General Court
• Decision Number: T-157/08

In Case T‑157/08,

Paroc Oy AB, established in Helsinki (Finland), represented by J. Palm,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 21 February 2008 (Case R 54/2008-2), concerning an application for registration of the word sign INSULATE FOR LIFE as a Community trade mark.

THE GENERAL COURT (First Chamber),

composed of J. Azizi (Rapporteur), President, E. Cremona and S. Frimodt Nielsen, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 28 April 2008,

having regard to the response lodged at the Court Registry on 7 January 2009,

having regard to the Court’s written question to the parties,

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 the closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

The first application for registration

1 On 4 May 2004, the applicant, Paroc Oy AB, had filed a first application for registration of a Community trade mark (‘the first application for registration’) at 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 mark in respect of which registration had been applied for was the word sign INSULATE FOR LIFE.

3 The goods in respect of which registration had been applied for were in Classes 6, 17 and 19 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 corresponded, in respect of each of those classes, to the following description:

– Class 6: ‘Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non‑electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores’;

– Class 17: ‘Rubber; gutta-percha; gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal’;

– Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.

4 By decision of 25 August 2005, the examiner had rejected the application for registration in respect of all of the goods at issue on the ground that the trade mark applied for was devoid of any distinctive character and was descriptive within the meaning of Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009).

5 On 24 October 2005, the applicant had brought an appeal against that decision.

6 By decision of 3 April 2006 (‘the first decision’), the Second Board of Appeal of OHIM had dismissed the appeal and had confirmed the refusal to register the word sign INSULATE FOR LIFE pursuant to Article 7(1)(b) and (c) of Regulation No 40/94. In essence, the Board of Appeal had held that the relevant public, whether general or specialist, would understand the combination of words ‘insulate for life’ immediately and without any special analytical effort as an indication that the applicant supplied durable insulation which can last a lifetime. In the absence of any unusual juxtaposition of its elements from the syntactic, grammatical, phonetic and/or semantic points of view, that combination of words is descriptive of the characteristics of the goods at issue and, therefore, necessarily devoid of any distinctive character (see paragraphs 15 and 18 to 20 of the first decision).

7 The applicant did not bring an action against the first decision before the Court.

The second application for registration

8 On 24 May 2007, the applicant filed a second application for registration of a Community trade mark at OHIM, pursuant to Regulation No 40/94 (‘the second application for registration’).

9 The mark in respect of which registration was applied for is the word sign INSULATE FOR LIFE.

10 The goods and services in respect of which registration was applied for are, firstly, in Classes 6, 17 and 19 of the Nice Agreement, for goods as described in paragraph 3 above, and, secondly, in Class 37 of the Nice Agreement, for services corresponding to the following description: ‘Building construction; repair; installation services’.

11 By decision of 23 October 2007, the examiner rejected the application for registration in respect of all of the goods and services at issue on the ground that the trade mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

12 On 20 December 2007, the applicant appealed against that decision.

13 By decision of 21 February 2008 (‘the second decision’ or ‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and confirmed the refusal to register the word sign INSULATE FOR LIFE pursuant to Article 7(1)(b) of Regulation No 40/94.

14 In essence, the Board of Appeal first of all referred to the reasons set out in paragraphs 15 to 20 of the first decision and noted, firstly, that the submissions of the applicant in relation to the goods in Classes 6, 17 and 19 of the Nice Agreement were, fundamentally, the same as those put forward in support of the first application for registration and, secondly, that the applicant had not ‘put forward any evidence to support a finding that there has been a change in the settled case-law on the subject or any development in the markets at issue which could lead the Board of Appeal to reconsider the grounds on which it ha[d] previously rejected the [first] application for registration’. In this regard, the Board of Appeal stated that the fact that the first decision was based on Article 7(1)(c) of Regulation No 40/94 was irrelevant, since, firstly, it is sufficient for just one of the absolute grounds provided for in Article 7(1) of Regulation No 40/94 to be applicable in order to refuse an application for registration and, secondly, a word sign that is descriptive of the characteristics of the goods at issue is, accordingly, necessarily devoid of any distinctive character with regard to those goods in accordance with Article 7(1)(b) of that regulation. Therefore, the Board of Appeal stated that it did not need to comment further, except on the arguments ‘that [had] not already been put forward in the [first] application for registration […]’ and on the registrability of the mark applied for in relation to the services in Class 37 of the Nice Agreement (see paragraphs 12 to 15 of the contested decision).

15 Furthermore, concerning those services, the Board of Appeal found, in essence, that the relevant public, whether general or specialist, would understand ‘the word sign [in question], as a whole, immediately and without further analytical effort as a reference to the fact that the applicant provides very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services’. The message conveyed by the...