Judgments nº T-49/19 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-49/19

(EU trade mark - International registration designating the European Union - Word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS - Trade mark consisting of an advertising slogan - Absolute ground for refusal - No distinctive character - Article 7(1)(b) of Regulation (EU) 2017/1001) In Case T-49/19,

View, Inc., established in Milpitas, Delaware (United States), represented by G. Tritton, Barrister,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 November 2018 (Case R 1625/2018-2), concerning the international registration designating the European Union in respect of the word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and B. Berke, Judges,

Registrar: A. Juhász-Tóth, administrator,

having regard to the application lodged at the Court Registry on 28 January 2019,

having regard to the response lodged at the Court Registry on 17 April 2019,

further to the hearing on 27 February 2020,

gives the following

Judgment

Background to the dispute

1 On 2 November 2017, the applicant, View, Inc., obtained from the World Intellectual Property Organisation (WIPO) international registration designating the European Union, under number 1381213, of the word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS.

2 On 21 December 2017, the European Union Intellectual Property Office (EUIPO) received notification of international registration of the word mark CREATE DELIGHTFUL ENVIRONMENTS, pursuant to 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).

3 The goods and services for which the protection of the word mark CREATE DELIGHTFUL HUMAN ENVIRONMENTS has been claimed in the European Union fall in Classes 9, 19 and 37 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 9: ‘Electronic controller for adjusting and controlling the tinting of insulated glass window units; computer programs, downloadable computer programs and mobile device software, all for use in adjusting and controlling the tinting of insulated glass window units’;

- Class 19: ‘Insulated glass window units with electrochromic coating for windows used in building construction’;

- Class 37: ‘Installation, maintenance and repair services for glass units for windows; providing information regarding the care, installation, maintenance and repair of glass units for windows; consultation services regarding the installation, maintenance and repair of glass units for windows’.

4 By decision of 20 June 2018, the examiner refused registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) of Regulation No 2017/1001. The examiner held that the sign requested was devoid of distinctive character and would be perceived by the relevant English-speaking public as a promotional statement that simply served to highlight the positive aspects of the goods and services concerned.

5 On 17 August 2018, the applicant brought an appeal before EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

6 By decision of 27 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, it held that, as the sign requested consisted of the combination of four English words, the relevant public was the English-speaking public of the European Union, comprising in part the general public and in part a specialist public with a high level of attention. In the second place, it held that the expression ‘create delightful human environments’ had a clear, ordinary meaning in everyday language that did not conflict with the rules of English grammar, and carried the overall message that by purchasing the goods and services in question the customer would enjoy the benefits promised, by using them to create pleasant and comfortable conditions to live in. In its view, the relevant public would perceive the sign only as a laudatory and promotional statement, intended to highlight the positive aspects of the goods and services in question. In the third place, it examined that sign specifically in relation to the goods in Classes 9 and 19 and the services in Class 37, and held that the sign merely highlighted the positive aspects of those goods and services, namely creation of a balance between natural light, heat, fading and harmful radiation.

7 Moreover, the Board of Appeal held that, although the case-law of the Court clarified certain questions relating to the acceptability of slogans as trade marks, that case-law could and should not be read as suggesting that any promotional phrase could now be registered as a trade mark merely because it was presented in the form of an advertising slogan. In the present case, it first of all considered that there was nothing about the sign applied for as a whole that might, beyond its obvious laudatory promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question, irrespective of whether it was a specialist public or the public at large. It next held that that mere promotional slogan, which required no interpretation and did not set off any cognitive process in the minds of the relevant public, conveyed nothing that would cause it to be perceived as an indication of the commercial origin of those goods and services. It finally held that the trade mark applied for was devoid of any distinctive character, pursuant to Article 7(1)(b) of Regulation 2017/1001, for all the goods and services in question.

Forms of order sought

8 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

9 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

10 In support of its action, the applicant raises a single plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. That plea divides in essence into two parts, the first based on various errors in the interpretation and application of the judgment of 21 January 2010, Audi v OHIM (C-398/08 P, ‘the Vorsprung durch Technik judgment’, EU:C:2010:29), and the second based on seven errors of assessment made in the present case.

11 As a preliminary point, the applicant claims that the sign...