Judgments nº T-423/18 of Tribunal General de la Unión Europea, May 07, 2019

• Resolution Date: May 07, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-423/18

(EU trade mark - Application for the EU word mark vita - Absolute grounds for refusal - No distinctive character - Descriptiveness - Concept of characteristic - Name of a colour - Article 7(1)(b) and (c) of Regulation (EU) 2017/1001) In Case T-423/18,

Fissler GmbH, established in Idar-Oberstein (Germany), represented by G. Hasselblatt and K. Middelhoff, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by W. Schramek and D. Walicka, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 28 March 2018 (Case R 1326/2017-5), relating to an application for registration of the word sign vita as an EU trade mark,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 6 July 2018,

having regard to the response lodged at the Court Registry on 24 September 2018,

having regard to the reassignment of the case to a new Judge-Rapporteur sitting in the Eighth Chamber,

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 Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 27 September 2016, the applicant, Fissler GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark, under the number 15857188, was sought for the word sign vita.

3 The goods in respect of which registration was sought are in Classes 7, 11 and 21 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 correspond, for each of those classes, to the following description:

- Class 7: ‘Food processors, electric; parts and accessories for the aforesaid goods’;

- Class 11: ‘Pressure cookers, electric; parts and accessories for the aforesaid goods’;

- Class 21: ‘Household or kitchen utensils and containers; cooking pot sets; pressure cookers, non-electric; parts and accessories for the aforesaid goods’.

4 By decision of 28 April 2017, the examiner refused registration of the mark applied for in respect of the goods concerned on the grounds that it was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).

5 On 20 June 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.

6 By decision of 28 March 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the relevant public, it found that the goods concerned were aimed above all at the general public, but also in part at a specialist public, for example chefs, and that the level of attention varied from average to high. It added that, as the mark applied for was a Swedish term, it was necessary to take into account the Swedish-speaking public in the European Union.

7 In the second place, as regards the descriptiveness of the mark applied for, the Board of Appeal, first, pointed out that the sign vita is the definite plural form of the word ‘vit’, which means ‘white’ in Swedish. Next, it found that, for the purposes of applying Article 7(1)(c) of Regulation 2017/1001, the question whether or not white was a common colour for those goods was not determinative. It was sufficient that those goods could exist in white and that the sign could be descriptive of them. After stating that the colour white was not the most common colour for ‘electronic and non-electronic’ (that is to say, electric and non-electric) pressure cookers and other household utensils, but that it was at least a fairly usual colour for those goods, it found that that showed that an average consumer would associate the goods concerned with the colour white and therefore found that the mark applied for was descriptive. Furthermore, the Board of Appeal pointed out that some kitchen utensils and household appliances are often referred to as ‘white goods’ in English and Swedish (‘vitvaror’). On the basis of an extract from the website which could be accessed via the internet address http://www.vitvara.n.nu/vad-ar-vitvaror, it deduced that some of the goods concerned, such as electric food processors or electric pressure cookers, could collectively be described as ‘white goods’. It stated that, even if that were not possible, because it is mainly large household appliances, like washing machines and dishwashers, which are described as ‘white goods’, it clearly demonstrated that the colour white was generally associated with household utensils. Lastly, it found that the mark applied for was purely descriptive.

8 In the third place, as regards the lack of distinctive character of the mark applied for, the Board of Appeal found that the mark applied for would be understood by the relevant public as a simple statement of fact in the sense that the goods concerned were goods that were available in white. It concluded that that mark was purely descriptive and, consequently, had no distinctive character. It took the view that any manufacturer of food processors and cooking pot sets could manufacture its goods in white and that that mark was not therefore capable of distinguishing the applicant’s goods from those of other undertakings. Furthermore, the Board of Appeal rejected the applicant’s argument that there are other registered trade marks which consist solely of colours.

Forms of order sought

9 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

10 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

11 In support of its action, the applicant puts forward two pleas in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001 and infringement of Article 7(1)(b) of that regulation respectively. In essence, it submits that the mark applied for is not descriptive with regard to the goods concerned and has the requisite distinctive character with regard to those goods.

Preliminary observation on the definition of the relevant public

12 It is necessary, at the outset, to define the relevant public in order to assess those two absolute grounds for refusal.

13 First, in paragraphs 13 to 15 of the contested decision, the Board of Appeal found that the average consumer of the goods concerned was primarily the ‘general consumer’, that is to say the general public, but also, in part, a specialist public, for example chefs, and that the level of attention therefore varied from average to high. However, it added that it was apparent from the case-law concerning relative grounds for refusal that, if the goods and services were aimed at average consumers as well as at a specialist public, the public with the lowest level of attention had to be taken into consideration and that, in the present case, the level of attention of the general public had to be taken into account. Lastly, it stated that, even if the sign were aimed at a specialist public with a higher level of attention, that did not mean that it would gain in distinctiveness, because a sign the descriptive meaning of which is not understood by the average consumer may be understood immediately by a specialist public (see, to that effect, judgment of 11 October 2011, Chestnut Medical Technologies v OHIM (PIPELINE), T-87/10, not published, EU:T:2011:582, paragraphs 27 and 28).

14 In that regard, it is apparent from the case-law that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the level of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist. The principle deriving from settled case-law, namely that, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered, might be undermined if the distinctiveness threshold of a sign depended generally on the degree of specialisation of the relevant public (see judgment of 12 July 2012, Smart Technologies v OHIM, C-311/11 P, EU:C:2012:460, paragraphs 48 to 50 and the case-law cited). The same is true of the assessment of the descriptiveness of a sign.

15 In the present case, the Board of Appeal was fully entitled to take into account the general public’s perception of the mark applied for and not to regard its perception by a specialist public, for example chefs, as having any particular effect.

16 Secondly, in paragraph 16 of the contested decision, the Board of Appeal pointed out that, under Article 7(2) of Regulation 2017/1001, a sign is to be refused registration even if the ground for refusal exists only in part of the European Union. It found that, given that the mark applied for is a term which comes from Swedish, the assessment of its eligibility for protection had to be based primarily on the...