Order of 12 Jun 2014, C-448/13 (Delphi Technologies), ECLI:EU:C:2014:1746.

ORDER OF THE COURT (Sixth Chamber)

12 June 2014 (*)

(Appeals — Community trade mark — Regulation (EC) No 207/2009 — Article 7(1)(b) — Word mark INNOVATION FOR THE REAL WORLD — Advertising slogan — Refusal of registration — No distinctive character)

In Case C-448/13 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 5 August 2013,

Delphi Technologies, Inc., established in Wilmington, Delaware (United States), represented by C. Albrecht and J. Heumann, Rechtsanwälte,

appellant,

the other party to the proceedings being:

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

defendant at first instance,

THE COURT (Sixth Chamber),

composed of A. Borg Barthet, President of the Chamber, E. Levits (Rapporteur) and F. Biltgen, Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

having regard to the decision taken, after hearing the Advocate-General, to rule by reasoned order in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1        By its appeal, the appellant, Delphi Technologies, Inc., asks the Court to set aside the judgment of the General Court in Case T-515/11 Delphi Technologies v OHIM (INNOVATION FOR THE REAL WORLD) EU:T:2013:300 (‘the judgment under appeal’), by which the General Court dismissed the action brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 23 June 2011 (Case R 1967/2010-2) concerning an application for registration of the word mark ‘INNOVATION FOR THE REAL WORLD’ as a Community mark (‘the decision at issue’).

 Legal context

2        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) provides:

‘The following shall not be registered:

…

b)      trade-marks which are devoid of any distinctive character;

…’

 Background to the dispute

3        The General Court summarised the facts giving rise to the dispute as follows:

‘1      On 17 July 2008, the applicant, Delphi Technologies, Inc., filed an application for registration of a Community trade mark at OHIM, under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), replaced by Regulation No 207/2009.

2      The mark for which registration was sought is the sign INNOVATION FOR THE REAL WORLD.

3      The goods and services in respect of which registration of the mark was sought are in Classes 7, 9, 10 and 12 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (‘the Nice Agreement’), and correspond, after the restriction made during the proceedings before OHIM, for each of those classes, to the following description:

Class 7 — “Motor vehicle products, namely fuel management systems and components, ignition systems and components, and emission control systems and components”;

Class 9 — “GPS navigation systems, radios, audio and sound systems and parts and accessories”;

Class 10 — “Medical apparatus and instruments for vital signs monitoring, for controlling medical infusions, and for the restoration and improvement of the respiratory function”;

Class 12 — “Motor vehicle products, namely braking systems and components, suspension systems and components, steering systems and components, powertrain suspension mounting systems, air bags, seat belts, shock absorbers and drive units for land vehicles”.

4      By letter of 27 March 2009, the examiner raised objections to the registrability of the mark [in question] on the ground that the mark is devoid of distinctive character.

5      By letter of 17 July 2009, in reply to the examiner’s letter of 27 March 2009, the applicant submitted, in essence, that the mark [for which registration was sought] was inherently distinctive, on the ground that the word ‘WORLD’ was a vague term, that the expression ‘REAL WORLD’ was not descriptive, promotional or laudatory, and that several similar marks had already been registered.

6      By decision of 25 August 2010, the examiner, pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, refused to register the mark … in respect of the goods referred to in paragraph 3 above on the ground that that mark was devoid of distinctive character.

7      On 8 October 2010, the applicant lodged an appeal with OHIM against the examiner’s decision.

8      By [the decision at issue], the Second Board of Appeal of OHIM [“the Board of Appeal”] dismissed the applicant’s appeal. First, the Board of Appeal defined the relevant public as being composed of English-speaking professionals, for the goods in Classes 7, 10 and 12 [of the Nice Agreement], and the English-speaking general public, for the goods in Class 9 [of that agreement]. It next pointed out that, in the light of the nature of the goods in question, the awareness of the relevant public — professionals or general public — was ‘relatively high’. It explained, however, that, despite the generally high level of awareness of the general public, that awareness could be relatively low when it came to promotional indications, which well-informed consumers did not see as decisive. The Board of Appeal then stated that the expression ‘innovation for the real world’ would be understood by the relevant public, without interpretation, as a laudatory message that the goods delivered by the applicant were innovations for the real world. The meaning of that expression was even clearer since the goods concerned pertained to a market where innovation is essential. According to the Board of Appeal, the mark [for which registration was sought] was therefore not an indication of the commercial origin of the goods. Furthermore, nothing in the expression “innovation for the real world”, beyond its promotional meaning, would enable the relevant public to memorise [that] mark … easily and instantly as a distinctive mark. In that regard, the Board of Appeal pointed out that the mark [for which registration was sought] was not a play on words and was not imaginative, surprising or unexpected. According to the Board of Appeal, that analysis did not contradict the judgment in Case C-398/08 P Audi v OHIM [EU:C:2010:29)], in so far as, in the present case, the mark applied for was not rejected because it was a promotional slogan, but because it was a banal slogan. Finally, the Board of Appeal explained that, in the Audi v OHIM case [EU:C:2010:29], the slogan was widely known as a consequence of its use over many years, which was not the case here.’

 The procedure before the General Court and the judgment under appeal

4        The application for annulment of the decision at issue lodged with the General Court by the appellant was based on a single plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009; the plea was divided into three parts.

5        In the first part of the plea the appellant alleged that the Board of Appeal erred in law in finding that the mark for which registration was sought was devoid of distinctive character.

6        After recalling the principles governing assessment of the distinctive character of a mark consisting of signs or indications used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark, the General Court found first, in paragraphs 23 and 24 of the judgment under appeal, that the appellant had not established that the goods in Class 9 of the Nice Agreement were all necessarily complex and were not per se addressed to a wide audience. Moreover, it added in paragraphs 25 to 27 of that judgment that the attention level of even a professional public is low in the case of a mark consisting of a promotional slogan.

7        Next, after finding in paragraphs 29 to 32 of the judgment under appeal that the Board of Appeal had not committed an error of assessment in considering that the sign ‘INNOVATION FOR THE REAL WORLD’ was not perceived as an indication of the commercial origin of the goods in question, the General Court found, in accordance with the judgments in Case C-64/02 P OHIM v Erpo Möbelwerk EU:C:2004:645 and Audi v OHIM EU:C:2010:29, that the sign, even as a promotional sign, could not be regarded as having distinctive character. In that regard, it stated in essence in paragraphs 35 and 36 of the judgment under appeal that a mark which consists of an advertising slogan must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned.

8        In its examination of the sign in paragraphs 37 to 43 of the judgment under appeal, the General Court upheld the Board of Appeal’s finding in the decision at issue that the sign was devoid of distinctive character.

9        In doing so, the General Court rejected the appellant’s arguments that the Board of Appeal in its examination of the sign in question applied criteria which were stricter than those applicable to other types of signs. It stated first, in paragraph 46 of the judgment under appeal, that the Board of Appeal carried out a comparison of its reasoning with that of the Court of Justice in Audi v OHIM EU:C:2010:29. Next, it found in paragraphs 47 to 54 of the judgment under appeal that the Board of Appeal had applied the criteria as derived from the relevant case-law, without introducing a hierarchy between the promotional function of a slogan and the function of indicating the commercial origin of the goods. Finally, in paragraph 56 of that judgment, it found that the Board of Appeal did not rely on the lack of renown of the mark for which registration was sought as the basis of its decision.

10      In the second part of the plea the appellant criticised the Board of Appeal for not taking into account the use of the mark for which registration was sought or its renown.

11      The General Court held (i) that the appellant had not raised that argument before the Board of Appeal and (ii) that the evidence adduced to show that use post-dated the appellant’s registration application.

12      In the third part of the plea the appellant criticised the Board of Appeal for not taking into consideration marks similar to the one for which registration was sought which had been registered by OHIM or in certain Member States.

13      The General Court stated that that part of the plea was ineffective in view of the rejection of the first and second parts. Moreover, it found that the OHIM decisions relied on by the appellant concerned marks that were in part different from the one for which registration was sought, and that OHIM is not bound by registration decisions adopted in Member States.

14      The General Court accordingly dismissed the appellant’s action as unfounded.

 Forms of order sought

15      By its appeal, the appellant claims that the Court should:

–        set aside the judgment under appeal;

–        annul the decision at issue; and

–        order OHIM to pay the costs incurred both in the appeal proceedings and in the proceedings before the General Court.

16      OHIM contends that the Court should dismiss the appeal and order the appellant to pay the costs.

 The appeal

17      Under Article 181 of the Rules of Procedure of the Court of Justice, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss the appeal in whole or in part without opening the oral procedure.

18      In support of its appeal, the appellant raises three grounds of appeal, the first two alleging infringement of Article 7(1)(b) of Regulation No 207/2009 and the third alleging infringement of the general principles of legality, equal treatment and good administration by OHIM.

 The first ground of appeal

 Arguments of the parties

19      The appellant criticises the General Court for not having correctly assessed, in paragraph 23 of the judgment under appeal, either the goods coming under Class 9 of the Nice Agreement for which registration of the mark was sought, or the relevant public. In addition, the General Court did not justify the assertion, on which it relied in paragraph 25 of that judgment, that the public’s degree of attention was low when it comes to purely promotional indications.

20      OHIM maintains that the appellant has not established any error of law and contests only the case-law relied on by the General Court.

 Findings of the Court

21      It must be stated that, in criticising the General Court for having found that the relevant public for the goods in Class 9 of the Nice Agreement for which registration of the mark was sought is the general public, the appellant does not invoke any error of law committed by the General Court, but contests its assessment of the facts.

22      It is settled case law of the Court of Justice that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see inter alia Case C-254/09 P Calvin Klein Trademark Trust v OHIM EU:C:2010:488, paragraph 49 and the case-law cited).

23      Therefore, in alleging that the General Court did not correctly define the relevant public, the appellant is in fact seeking a fresh assessment of the facts by the Court of Justice. Since the appellant is not alleging that the facts or evidence were distorted, it must be held that that argument is manifestly inadmissible.

24      In addition, it has already been held that findings relating to consumers’ degree of attention, perception or attitude represent appraisals of fact (Case C-144/06 P Henkel v OHIM EU:C:2007:577, paragraph 51, and the order in Case C-354/12 P Asa v OHIM EU:C:2013:238, paragraph 31).

25      Therefore, the appellant’s argument seeking to call into question the General Court’s assessment of the degree of attention of the relevant public must also be rejected.

26      Accordingly, the first ground of appeal must be rejected as manifestly inadmissible.

 Second ground of appeal

 Arguments of the parties

27      The appellant alleges that the General Court infringed Article 7(1)(b) of Regulation No 207/2009 by interpreting too strictly the criteria for assessing the distinctive character of the mark applied for.

28      It argues that, according to the wording of that provision, the smallest degree of distinctiveness is sufficient to preclude a sign from being devoid of distinctive character.

29      First, in paragraphs 33 and 36 of the judgment under appeal, the General Court held that distinctive character must be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services in question, contrary to the principle established in OHIM v Erpo Möbelwerk EU:C:2004:645 and Audi v OHIM EU:C:2010:29 that the direct perception of a sign cannot be a relevant criterion for establishing the distinctive character of that sign.

30      In addition, in paragraph 37 of the judgment under appeal, the General Court did not assess correctly the perception of the sign ‘INNOVATION FOR THE REAL WORLD’.

31      Secondly, in paragraph 46 of the judgment under appeal, the General Court merely cited the case-law established in OHIM v Erpo Möbelwerk EU:C:2004:645 and Audi v OHIM EU:C:2010:29, without, however, applying it. In addition, the General Court misunderstood the appellant’s argument a contrario concerning the difficulties in perceiving three-dimensional marks as such.

32      Thirdly, the General Court wrongly found in paragraph 51 of the judgment under appeal that the decision at issue did not establish any hierarchy between the promotional function of a slogan and the function of indicating commercial origin. In that regard, in paragraphs 55 and 56 of the judgment under appeal, the General Court misunderstood the significance of the reference to the renown of the mark in question in the case giving rise to the judgment in Audi v OHIM EU:C:2010:29, that renown being irrelevant for the assessment by the Court of Justice. In addition, the General Court did not analyse any of the relevant criteria established in that judgment. However, in the light of those criteria, the General Court should have found that the sign in question did have distinctive character in the same way as the Court of Justice did in Audi.

33      Fourthly, the appellant claims that the General Court, in its examination of the distinctive character of the mark applied for, misconstrued the criterion relating to the renown of that mark.

34      In OHIM’s opinion, the appellant has failed to establish an error of law or any distortion of the facts or evidence. The criticisms directed at the judgment under appeal are merely the result of a misreading of that judgment.

 Findings of the Court

35      Concerning the first part of the second ground of appeal, it must be stated that the appellant’s criticism stems from a misreading of the judgment under appeal and the case-law cited in that judgment.

36      In paragraphs 34 to 36 of its judgment, the General Court faithfully applied the principle laid down by the Court of Justice in paragraphs 44 and 45 of the judgment in Audi v OHIM EU:C:2010:29 according to which, in essence, the mere fact that a mark is perceived by the relevant public as a promotional formula is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character, as the mark could be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of the goods or services which it covers. Therefore, the General Court was correct to find, in paragraph 36 of the judgment under appeal, that a mark composed of a promotional formula must be recognised as having distinctive character if it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services for which its registration is sought.

37      In doing so, and contrary to what the appellant claims in the second part of its second ground of appeal, the General Court did not establish any hierarchy between the promotional aspect and the commercial aspect of the perception of a mark consisting of a promotional slogan. On the contrary, in accordance with the principles of the case-law which it set out in paragraphs 34 and 35 of that judgment, it stated that such a mark must not be regarded as devoid of distinctive character unless it is perceived by the relevant public only as a mere promotional formula, and not also as an indication of the commercial origin of the products and services for which its registration is sought.

38      Moreover, the appellant cannot criticise the General Court for failing to state reasons for the lack of distinctive character of the mark applied for. Indeed, in paragraphs 37 to 43 of the judgment under appeal, the General Court carried out a detailed examination of the perception of the sign in question.

39      In that regard, as is apparent from paragraph 22 above, an appeal lies on points of law only. In criticising paragraph 37 of the judgment under appeal which upholds the Board of Appeal’s assessment of the way in which the sign ‘INNOVATION FOR THE REAL WORLD’ is perceived by the relevant public, the appellant is seeking from the Court of Justice a new assessment of the facts, which is precluded in an appeal.

40      Concerning the third part of the second ground of appeal, it must be stated that, in criticising the General Court for having wrongly described paragraphs 27 and 28 of the decision at issue as a comparative analysis of the Board of Appeals’ reasoning in the present case and that of the Court of Justice in the judgment in Audi v OHIM EU:C:2010:29, the appellant does not indicate how the General Court thereby erred in law. That criticism, in any event, stems from a misreading of the decision at issue, since those paragraphs, which relate to the case-law relied on by the appellant, are the counterpart of paragraph 26, which concerns the perception of the sign for which registration as a mark was sought by the appellant.

41      Finally, concerning the fourth part of the second ground of appeal, the appellant does not indicate how the General Court erred in law when it stated in paragraph 56 of the judgment under appeal that, before dealing with the issue of the renown of the mark applied for, the Board of Appeal had already concluded that the mark did not have a distinctive character. In doing so, the appellant repeats the complaint raised before the General Court without specifically referring to an error of law in the judgment under appeal.

42      Therefore, the second ground of appeal must be dismissed as being in part manifestly unfounded and in part manifestly inadmissible.

 The third ground of appeal

 Arguments of the parties

43      The appellant claims that the General Court infringed the principles of equal treatment and sound administration by rejecting its appeal against the decision at issue, even though OHIM applied to the appellant’s application for registration of the mark in question criteria that were stricter than those which allowed the registration of similar marks. In any event, OHIM must provide a statement of reasons for every decision refusing registration.

44      OHIM states that, under this ground of appeal, the appellant’s criticisms are directed exclusively against the Board of Appeal and in no way do they identify an error of law committed by the General Court.

 Findings of the Court

45      It must be observed that the appellant does not identify precisely an error of law for which it criticises the General Court. Thus, it merely claims that, in its action for annulment, the General Court applied different criteria from those applied in earlier cases. In doing so, the appellant does not specify the differences which it bases this criticism on. In any event, even if it were to be considered that the appellant is referring to the criteria for assessing the distinctive character of a mark consisting of an advertising slogan, it is clear from paragraphs 36 to 41 above that the General Court did not commit any error of law in the choice and application of the criteria used to assess that character.

46      Consequently, the third ground of appeal must be rejected as manifestly unfounded.

47      It follows from the above considerations that the appeal must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly unfounded.

 Costs

48      Under Article 138(1) of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the appellant has been unsuccessful and OHIM has applied for an order for costs, the appellant must be ordered to pay the costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1.      The appeal is dismissed.

2.      Delphi Technologies, Inc. shall pay the costs.

[Signatures]

* Language of the case: English.