Judgments nº T-471/07 of Court of First Instance of the European Communities, September 15, 2009

• Resolution Date: September 15, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-471/07

In Case T-471/07,

Wella AG, established in Darmstadt (Germany), represented by B. Klingberg and K. Sandberg, lawyers,

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 24 October 2007 (Case R 713/2007-2), relating to a territorial extension, to the European Community, of the protection in respect of the international registration of the word mark TAME IT,

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

composed of V. Tiili, President, F. Dehousse and I. Wiszniewska-Bia-ecka (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 21 December 2007,

having regard to the response lodged at the Registry of the Court of First Instance on 19 March 2008,

further to the hearing on 17 February 2009,

gives the following

Judgment

Background to the dispute

1 On 10 January 2006, the applicant, Wella AG, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration of the word mark TAME IT for goods in Class 3 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, which correspond to the following description: -soaps, perfumeries, essential oils, cosmetics, hair lotions, dentifrices-.

2 On 20 April 2006, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received a notification, pursuant to Article 3ter of the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22) (-the Madrid Protocol-), of a request for territorial extension to the European Community of the protection in respect of that international registration.

3 On 20 October 2006, OHIM notified an ex officio provisional refusal of protection of the trade mark TAME IT in the European Community pursuant to Article 5 of the Madrid Protocol and Rule 113 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, for all the goods covered by the international registration. The ground relied on was that the trade mark TAME IT lacked distinctive character within the meaning of Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p.1), as amended (now Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

4 On 21 December 2006, the applicant responded to the objections raised in the notification of provisional refusal.

5 By decision of 9 March 2007 (-the examiner-s decision-), the examiner refused the extension to the European Community of the protection in respect of the mark TAME IT for all the goods, on the ground that that mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Council Regulation No 40/94.

6 On 9 May 2007, the applicant filed a notice of appeal at OHIM against that decision, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

7 By decision of 24 October 2007 (-the contested decision-), the Second Board of Appeal of OHIM granted the appeal in part. In essence, the Board of Appeal found that the goods in respect of which the territorial extension of protection to the European Community had been sought were everyday consumer goods, that the relevant public consisted of average English-speaking consumers established in the Community, who are reasonably well-informed and reasonably observant and circumspect, that the verb -to tame- meant -to -soften--, -to -harness or control-- or -to -make tractable-- and that the combination of words -tame it- followed the rules of ordinary English grammar and syntax. The Board of Appeal concluded that, in relation to hair lotions, cosmetics and essential oils - the latter two categories of goods also being capable of being used to tame hair - the relevant public would immediately, clearly and without any further thought understand the expression -tame it- as a purely promotional message informing that public about the desired effect of using those goods. The Board of Appeal found that, as regards those goods, the mark TAME IT was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. However, the Board of Appeal found that no relevant connection could be established between the mark TAME IT and the -soaps, perfumeries and dentifrices- and that therefore it could not conclude that, as regards those goods, that mark lacked distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. In view of those considerations, the Board of Appeal, first, dismissed the appeal and upheld the examiner-s decision in so far as it had refused the European Community designation of the international registration of the mark TAME IT for -essential oils, cosmetics [and] hair lotions- and, secondly, annulled the examiner-s decision and, consequently, allowed...