Judgments nº T-339/05 of Court of First Instance of the European Communities, June 12, 2007

• Resolution Date: June 12, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-339/05

In Case T-339/05,

MacLean-Fogg Co., established in Mundelein, Illinois (United States), represented by S. Pr¸ckner and A. Franke, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 20 June 2005 (Case R 1122/2004-1), concerning the registration of the word mark LOKTHREAD as a Community trade mark,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),

composed of M. Vilaras, President, E. Martins Ribeiro and K. J¸rim‰e, Judges,

Registrar: K. Poche-, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 9 September 2005,

having regard to the response lodged at the Court Registry on 18 January 2006,

further to the hearing on 16 January 2007,

gives the following

Judgment

†Background to the dispute

1††††††††On 31 October 2003, the applicant filed an application for a Community trade mark 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.

2††††††††The trade mark in respect of which registration was sought is the word sign LOKTHREAD.

3††††††††The goods in respect of which registration was sought are in Class 6 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 are defined as: -[b]olts, bolts of metal, nuts, nuts of metal-.

4††††††††In a communication of 5 March 2004, the examiner informed the applicant that the trade mark requested did not appear to be eligible for registration, pursuant to Article 7(1)(b) of Regulation No 40/94. He indicated, in particular, that, in relation to the goods concerned, potential customers who were presented with the trade mark LOKTHREAD would see in it a claim that the goods had a thread that locks. The examiner therefore invited the applicant to file observations within a two- month period.

5††††††††By letter of 30 April 2004, the applicant filed its observations on the objections of the examiner and stated in essence that, in view of the degree of specialisation of its customers and the perceptible differences between the words -lock thread- and the requested trade mark LOKTHREAD, the latter would be treated by its customers as a piece of information indicating the source of the goods and not as a claim that the goods have a thread that locks.

6††††††††By a decision of 30 September 2004, the examiner refused the application on the ground that the Community trade mark applied for came within the grounds for refusal in Article 7(1)(b) and (c) of Regulation No 40/94, as the trade mark, when considered as a whole, was descriptive and lacked distinctiveness. The examiner indicated that an internet search had revealed that the expression -LOKTHREAD- was used in respect of the goods concerned.

7††††††††On 30 November 2004, the applicant filed notice of appeal at OHIM against the decision of the examiner, pursuant to Articles 57 to 62 of Regulation No 40/94.

8††††††††On 14 February 2005, the appeal was submitted to the Examination Division for interlocutory revision. The Examination Division did not rectify the decision and remitted the case, on 14 March 2005, to the Board of Appeal, pursuant to Article 60(2) of Regulation No 40/94.

9††††††††By a decision of 20 June 2005 (-the contested decision-), the First Board of Appeal, in essence, firstly found that the sign LOKTHREAD was made up of two English words and that it was not structurally unusual, since it did not deviate from the lexical rules of the English language. Visually, the term -lok- was to be treated as a misspelling of -lock- and, phonetically, the term -lok- would be pronounced in the same way as the word -lock-. Secondly, in accordance with the definitions of the English terms -lock- and -thread-, the Board of Appeal considered that the sign LOKTHREAD had the meaning of a thread structure used in a locking mechanism. As the sign was made up exclusively of two terms which were descriptive of characteristics of the goods in question, the mere combination of the components itself remained descriptive of those characteristics. The Board of Appeal therefore held that the trade mark applied for was descriptive of the goods, with the effect that, pursuant to Article 7(1)(c) of Regulation No 40/94, it was not registrable.

†Forms of order sought

10††††††The applicant claims that the Court should:

-††††††††annul the contested decision;

-††††††††order OHIM to pay the costs.

11††††††OHIM contends that the Court should:

-††††††††dismiss the action;

-††††††††order the applicant to pay the costs.

†Law

12††††††In support of its application for annulment of the contested decision, the applicant relies on two pleas, the first alleging infringement of Article 7(1)(c) of Regulation No 40/94 and the second alleging infringement of Article 7(1)(b) of the regulation.

†The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94

†Arguments of the parties

13††††††The applicant reiterates, first of all, the case-law of the Court of Justice and the Court of First Instance concerning the essential function of the trade mark, the public interest underlying the grounds for refusal to register in Article 7(1) of Regulation No 40/94, and the fact that only those signs and indications which may serve, in normal usage from a consumer-s point of view, to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought are ineligible for registration (Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25; Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 35; Case C-299/99 Philips [2002] ECR I-5475, paragraph 30; Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 67; Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 18; Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 25; Case T-34/00 Eurocool Logistik v OHIM(EUROCOOL) [2002] ECR II-683, paragraph 38; and Case T-289/02 Telepharmacy Solutions v OHIM(TELEPHARMACY SOLUTIONS) [2004] ECR II-2851, paragraph 23).

14††††††Concerning the relevant public, the applicant states that the goods concerned are primarily marketed to equipment manufacturers who will have a specific knowledge of them or also to do-it-yourself enthusiasts. Consequently, the assessment of the descriptive character of the sign LOKTHREAD must be made both in respect of professionals as well as the average consumer in general, who should be assumed to be well informed and reasonably observant and circumspect. The relevant public is the consumer in the whole of the European Community and not the English-speaking public, as was wrongly stated by the Board of Appeal, since the term LOKTHREAD does not belong to any particular European language and is a neologism of unknown origin and unusual structure.

15††††††According to the applicant, it is necessary, within the framework of Article 7(1)(c) of Regulation No 40/94, to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the category of goods concerned (Case T-356/00 DaimlerChrysler v OHIM(CARCARD) [2002] ECR II-1963, paragraph 28).

16††††††Contrary to the view of the Board of Appeal, the sign LOKTHREAD is unusual. It represents a single and unitary word and, consequently, the relevant public will not separate it into different parts or into words which could be included in it. Even if consumers recognised that the series of letters at the end of the trade mark may be read as the English words -read- or -thread-, they would not, without further deliberation, understand the meaning of the corresponding series of letters -lokth- or -lok- at the beginning of the trade mark, which represent neither an English word or an abbreviation of an English word, nor a letter combination which can be found in any English dictionary or lexicon. Therefore, consumers will read and perceive the sign LOKTHREAD, taken as a whole, as a unitary word of unknown origin, not as a combination of two words. Neither the Board of Appeal nor the examiner has shown any evidence that LOKTHREAD is used in documents or in common parlance in English or in any other European language. Only the use of the words -lock- and -thread- or grammatically correct combinations like -thread lock- or -self-locking thread-form-, in which the individual words are separated by a space, has been shown. Nor do the documents submitted show that the competitors of the applicant use a juxtaposition of the terms -thread- and -lock- in a single word such as -threadlock- or -lockthread- to designate goods.

17††††††In finding that the term -lok- was a misspelling of -lock- and that it would be pronounced exactly like the latter, so that the examination had to be based on -lock-, the Board of Appeal infringed Article 7(1)(b) and (c) of Regulation No 40/94, since only the mark applied for should be examined. Likewise, the Board of Appeal erred when it considered the combination to be made up of English terms because, on the contrary, English consumers will notice the visual and conceptual difference resulting from the difference in spelling and the fact that the term -lok- is not an English...