Judgments nº T-5/19 of Tribunal General de la Unión Europea, May 13, 2020

• Resolution Date: May 13, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-5/19

(EU trade mark - International registration designating the European Union- Figurative mark PROFI CARE - Absolute grounds for refusal - No distinctive character - Article 7(1)(b) of Regulation (EU) 2017/1001 - Descriptive character - Article 7(1)(c) of Regulation 2017/1001 - Obligation to state reasons)

In Case T-5/19,

Clatronic International GmbH, established in Kempen (Germany), represented by O. Löffel, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 15 October 2018 (Case R 504/2018-1), relating to the international registration designating the European Union in respect of the figurative mark PROFI CARE,

THE GENERAL COURT (Sixth Chamber),

composed of D. Spielmann, acting as President, Z. Csehi (Rapporteur) and O. Spineanu-Matei, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 4 January 2019,

having regard to the response lodged at the Court Registry on 26 March 2019,

having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from acting,

further to the hearing on 6 November 2019,

gives the following

Judgment

Background to the dispute

1 On 3 July 2017, the applicant, Clatronic International GmbH, obtained international registration No 1372358 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO). On 26 October 2017, that international registration was notified to the European Union Intellectual Property Office (EUIPO) under 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 The trade mark that is the subject of the international registration designating the European Union is the following figurative sign:

3 The goods in respect of which registration was sought are in Classes 8, 9, 10, 11, 21 and 26 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, inter alia, for each of those classes, to the following description:

- Class 8: ‘Hand tools and implements (hand operated); razors; hygienic and beauty implements for humans and animals; hair styling appliances; body art tools; manicure and pedicure tools; hair cutting and removal implements; hair clippers, electric and non-electric; hair-removing tweezers; beard clippers; electric or non-electric fingernail polishers; pedicure sets; electric curling irons; non-electric curling irons; electric hair straighteners; parts of the aforesaid goods, included in this class’;

- Class 9: ‘Weighing apparatus and instruments; measuring apparatus and instruments; thermometers, not for medical purposes; scales; scales with body mass analysers; electronic weighing scales for personal use; parts of the aforesaid goods, included in this class’;

- Class 10: ‘Medical apparatus and instruments; dental apparatus and instruments; veterinary apparatus and instruments; orthopedic articles; massage apparatus; diagnostic, testing and monitoring apparatus for medical purposes; blood pressure meters; ultrasonic cleaning instruments for medical use; ultrasonic cleaning instruments for veterinary use; ultrasonic cleaning instruments for surgical use; clinical thermometers; thermometers for medical purposes; feeding aids and pacifiers; feeding bottles; feeding bottle teats; parts of the aforesaid goods, included in this class’;

- Class 11: ‘Food and beverage cooking, heating, cooling and treatment equipment; heating, ventilating, air conditioning and air purifying apparatus and installations; tanning apparatus [sun beds]; solaria, other than for medical purposes; tanning beds; fan heaters; radiators [heating]; blankets, electric, not for medical purposes; ventilating fans; hair dryers; hood driers; steam baths; saunas and spas; facial saunas; air purifiers; heaters, electric, for feeding bottles; sterilisation, disinfection and decontamination installations and equipment; parts of the aforesaid goods, included in this class’;

- Class 21: ‘Brushes, brooms and other cleaning instruments and cleaning articles, material for brush-making; dental cleaning articles; cosmetic and toilet utensils and bathroom articles; toothbrushes; toothbrushes, electric; heads for electric toothbrushes; water apparatus for cleaning teeth and gums; ultrasonic cleansing devices for dental prostheses [not for medical purposes]; combs; hairbrushes; electric combs; electrically heated hair brushes; heaters for feeding bottles, non-electric; feeding bottle brushes; parts of the aforesaid goods, included in this class’;

- Class 26: ‘Decorative articles for the hair, hair curlers, hair rollers, hair fastening articles, and false hair; electric hair rollers; electric hair curlers; curling pins; parts of the aforesaid goods, included in this class’.

4 By decision of 8 February 2018, the examiner refused, in its entirety, the application for registration in respect of the goods referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001 read in conjunction with Article 7(2) of that regulation.

5 On 20 March 2018, the applicant filed a notice of appeal against that decision with EUIPO, under Articles 66 to 71 of Regulation 2017/1001.

6 By decision of 15 October 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

7 With regard to the analysis under Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal held, in paragraphs 19 to 34 of the contested decision, that the mark applied for will, on account of the word element ‘profi care’, be understood as designating personal care products that constitute, or have the quality of, professional tools. It found that it was descriptive of all the goods referred to as they were directly related to personal care, including personal hygiene, and to skin care, hair care, health care and hair styling. It held, in essence, that the figurative elements of the mark applied for were merely decorative and banal and were not such as to invalidate its purely descriptive character.

8 With regard to the analysis under Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal held, in paragraphs 35 to 45 of the contested decision, that the trade mark applied for was not capable of distinguishing the goods covered on the basis of their origin, on the ground that the relevant public will perceive the sign rather as a conventional laudatory indication encouraging purchase, and not as an indication of origin. Furthermore, the Board of Appeal held, in paragraphs 46 and 47 of the contested decision, that, where the sign was directly descriptive of the goods referred to under Article 7(1)(c) of Regulation 2017/1001, the trade mark applied for was not eligible for registration under Article 7(1) (b) of that regulation.

Procedure and forms of order sought

9 The applicant claims that the Court should:

- annul the contested decision;

- register the mark applied for;

- order EUIPO to pay the costs.

10 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

11 At the hearing, in response to a question from the Court, the applicant expressly abandoned the second head of claim in the application, seeking an order that EUIPO register the mark applied for, formal note of which was taken.

Law

12 In support of its action, the applicant raises four pleas in law, alleging, first, failure to state reasons and errors of assessment in the analysis of the descriptive character of the trade mark applied for, carried out under Article 7(1)(c) of Regulation 2017/1001, secondly, failure to state reasons and errors of assessment in the analysis of the lack of distinctive character of the mark applied for, carried out under Article 7(1)(b) of the regulation, thirdly, infringement of Article 94(1) of that regulation, concerning the obligation to state reasons, and, fourthly, infringement of the rights of defence and of the right to be heard.

The first plea, alleging inadequate reasoning and errors of assessment in the analysis carried out under Article 7(1)(c) of Regulation 2017/1001

13 By its first plea the applicant argues that the Board of Appeal’s finding that the mark applied for is descriptive of the goods covered is not sufficiently reasoned and is incorrect. The first plea in the action may be divided, in essence, into two parts, seeking, first, assessment of the central figurative element of the mark applied for and, secondly, assessment of the descriptive character of the mark applied for having regard to the goods covered.

14 EUIPO disputes all those arguments.

15 Under the first sentence of Article 94 of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. Moreover, it should be added that the obligation to state the reasons on which EUIPO’s decisions are based has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose clearly and unequivocally the reasoning followed by the institution which adopted the measure in question. That duty is intended, first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 21 October 2004, KWS Saat v OHIM, C-447/02 P, EU:C:2004:649, paragraphs 63 to 65 and the case-law cited).

16 Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to...