CJEU Order C-636/15 August Storck v OHIM 11 May 2016

ORDER OF THE COURT (Ninth Chamber)

11 May 2016 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — Word sign ‘2good’ — Mark consisting of an advertising slogan — Regulation (EC) No 207/2009 — Article 7(1)(b) — Absolute ground for refusal — No distinctive character)

In Case C-636/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 30 November 2015,

August Storck KG, established in Berlin (Germany), represented by N. Gregor, Rechtsanwalt,

applicant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Ninth Chamber),

composed of C. Lycourgos (Rapporteur), President of the Chamber, C. Vajda and K. Jürimäe, Judges,

Advocate General: M. Wathelet,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1 By its appeal, August Storck KG (‘August Storck’) asks the Court to set aside the judgment of the General Court of the European Union of 25 September 2015 in August Storck v OHIM (2good) (T-366/14, EU:T:2015:697, ‘the judgment under appeal’), by which that Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO), of 27 February 2014 (Case R 996/2013/-1, ‘the contested decision’), concerning an application for registration of the word sign ‘2good’ as an EU trade mark.

Legal context

2 Article 7 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), entitled ‘Absolute grounds for refusal’, provides, in paragraphs 1(b) and 2:

‘1. The following shall not be registered:

...

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

...

2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.’

Background to the dispute

3 On 1 November 2012, August Storck applied to EUIPO for protection of the word mark ‘2good’, relying on the international registration of 22 August 2012 designating the European Union, based on German trade mark application No 302012043158 of 7 August 2012.

4 The goods for which registration was sought are in Class 30 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 to the following description: ‘Confectionery, chocolate, chocolate products, pastries, ice cream, preparations for making the aforementioned products included in Class 30’.

5 By decision of 3 April 2013, the examiner rejected that application, on the ground that the mark applied for came within the scope of the ground for refusal set out in Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, since the number 2, which referred to the adverb ‘too’ (as in extremely), reinforced the adjective ‘good’, with the result that the expression would be perceived as a laudatory statement.

6 On 29 May 2013, August Storck lodged an appeal with EUIPO under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

7 By the contested decision, the First Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed the appeal. It found, in essence, that the number 2, when combined with one or more word elements, usually represented the words ‘too’ or ‘to’, depending on the context. Therefore, since the word ‘to’ would make no sense in the mark applied for and the expression ‘too good’ was a widely and commonly used laudatory expression, there could be no doubt that the number 2, combined with the word ‘good’, would be perceived primarily by the English-speaking public as ‘too’. Moreover, since all of the goods at issue related to taste or the perception of flavours, the Board of Appeal found that the relevant consumer would perceive the mark ‘2good’ as a laudatory expression about those goods.

The proceedings before the General Court and the judgment under appeal

8 By an application registered with the Registry of the General Court on 28 May 2014, August Storck brought in action for annulment of the contested decision.

9 In support of its action, August Storck raised a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, by which, in essence, it criticised the Board of Appeal for finding that the mark applied for does not have distinctive character.

10 In the judgment under appeal, the General Court dismissed that action.

Forms of order sought before the Court of Justice

11 By its appeal, August Storck claims that the Court should:

– set aside the judgment under appeal;

– annul the contested decision, and

– order EUIPO to pay the costs.

The appeal

12 Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

13 It is appropriate to apply that provision to the present case.

14 In support of its appeal, August Storck raises a single ground of appeal alleging infringement of Article 7(1)(b) of Regulation No 207/2009, which is divided into three parts.

The first part of the single ground of appeal

Arguments of the appellant

15 By the first part of its single ground of appeal, August Storck considers that, despite a correct summary of the principles with regard to the distinctive character of a mark, in paragraphs 11 to 22 of the judgment under appeal, the General Court incorrectly applied, in paragraphs 24, 30, 33 and 35 of that judgment, the rules set out in Article 7(1)(b) of Regulation No 207/2009, in particular with regard to marks made up of signs or indications that are also used as advertising slogans or indications of quality.

16 First of all, August Storck claims that the General Court infringed the principle that only a minimal level of distinctive character is required under Article 7(1)(b) of Regulation No 207/2009 for a trademark to be registered. By requiring, in paragraphs 30 and 35 of the judgment under appeal, that the mark have originality or salience and that the relevant public be confronted with a slogan which, inter alia, has a number of meanings or constitutes a play on words or is perceived as imaginative, surprising and unexpected, the General Court overstretched the requirements relating to the distinctive character of a mark.

17 Secondly, August Storck asserts that the General Court incorrectly applied the case-law of the Court of Justice on marks that also contain a promotional message. While contesting, in that regard, that the mark applied for contains a promotional message, the appellant considers that, even if such were the case, it would be contrary to the case-law on such marks to require, as the General Court did in paragraph 35 of the judgment under appeal, that the mark applied for should have a number of meanings, or constitute a play on words, or be perceived as imaginative, surprising or unexpected. The Court of Justice has held, in that regard, that one may not apply to marks consisting of signs also used as advertising slogans criteria which are stricter than those applicable to other types of signs.

18 Furthermore, the General Court infringed the rules applicable to promotional marks by finding, in paragraphs 24 to 35 of the judgment under appeal, that a mark is devoid of any distinctive character if it is perceived by the relevant public as an advertising slogan. According to the case-law of the Court of Justice (judgment of 21 January 2010 in Audi v OHIM, C-398/08 P, EU:C:2010:29), it is sufficient if a mark, in addition to its promotional function, is perceived readily by the relevant public as an indication of the commercial origin of the goods and services for which registration is sought. However, the General Court did not examine whether the mark applied for could be perceived as such an indication.

Findings of the Court

19 It should be noted that, having recalled, in paragraphs 11 to 14 of the judgment under appeal, the conditions required for a mark to have distinctive character, within the meaning of Article 7(1) of Regulation No 207/2009, the General Court stated, in paragraphs 15 to 18 of that judgment, with regard in particular to marks made up of signs or indications used as advertising slogans, indications of quality or incitements to purchase the goods or services covered, that, first, one may not apply to such marks criteria which are stricter than those applicable to other signs and, secondly, that they should be acknowledged as having distinctive character if, in addition to their promotional function, they may be perceived at the outset by the relevant public as an indication of the commercial origin of the goods and services for which registration is sought.

20 The General Court, contrary to what the appellant claims, did not incorrectly apply the requirements relating to the distinctive character of a mark, as set out in Article 7(1)(b) of Regulation No 207/2009.

21 First, as regards the fact that the General Court, in paragraph 30 of the judgment under appeal, referred to the criteria of originality and salience to determine if the mark applied for has distinctive character, it must be noted that, contrary to what August Storck claims, such criteria derive from the settled case-law of the Court of Justice. The Court considers that marks made up of signs or indications that are also used as advertising slogans can express an objective message, even a simple one, and still be capable of indicating to the consumer the commercial origin of the goods or services in question, particularly where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (judgment of 21 January 2010 in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 57, and order of 11 December 2014 in FTI Touristik v OHIM, C-253/14 P, not published, EU:C:2014:2445, paragraph 36).

22 Secondly, contrary to what August Storck claims, after stating, in paragraphs 22 to 30 of the judgment under appeal, the reasons why the mark applied for is simply an ordinary advertising slogan, the General Court did examine, in paragraphs 32 to 36 of that judgment, whether that mark, in addition to its promotional meaning, would be perceived as an indication of the commercial origin of the products for which registration is sought. In particular, the General Court indicated, in those latter paragraphs, that the expression ‘2good’ would only be perceived as laudatory with regard to the gustatory qualities of the products concerned and, therefore, not in any way as an indication of origin.

23 Finally, the complaint directed by the appellant against paragraph 35 of the judgment under appeal is based on a manifestly erroneous reading of that paragraph. The General Court did not state, in that paragraph, that the mark applied for could not be perceived as an indication of the origin of the products in question as it failed to have a number of meanings, to constitute a play on words or to be imaginative, surprising and unexpected, but pointed out that, unlike the facts which gave rise to the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29), relied on by the appellant itself in its action before the General Court, the relevant public would be confronted with a simple statement relating to an allegedly highly positive gustatory quality of the products concerned. In that regard, it should be noted that, in paragraph 47 of that judgment, the Court indicated that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character. By examining, in paragraph 35 of the judgment under appeal, whether those characteristics were present in the present case, the General Court merely applied the case-law of the Court of Justice.

24 It follows that the first part of the single ground of appeal must be rejected as being manifestly unfounded.

The second part of the single ground of appeal

Arguments of the appellant

25 By the second part of the single ground of appeal, August Storck considers that the General Court applied, in paragraphs 24, 30 and 32 to 35 of the judgment under appeal, the criterion of the distinctive character of the mark too strictly and contrary to the case-law of the Court of Justice, which led it to wrongly conclude, in paragraph 36 of that judgment, that the mark applied for is devoid of any distinctive character.

26 In the first place, the General Court did not examine the fact that the relevant public will perceive the mark applied for visually. In that regard, the mark ‘2good’ is, it is claimed, unusual and invented since it combines a number and a word, without a space between those two elements. August Storck states that that mark would therefore have a minimum level of originality leading to a sufficient level of distinctive character, and adds it is aware of only one mark in use for goods of class 30 consisting of a number and a word, namely the mark nimm 2, of which, moreover, it is the proprietor.

27 In the second place, August Storck considers that the General Court wrongly concluded, in paragraph 30 of the judgment under appeal, that the mark applied for is simply an ordinary advertising slogan and not a mark which identifies the goods covered as originating from a particular undertaking. That conclusion, it is claimed, is based on the erroneous opinion, expressed in paragraphs 24 and 26 to 29 of that judgment, that the mark will only be understood as meaning ‘too good’.

28 First, the appellant claims that the General Court ignored and thus distorted the fact that the expression ‘2good’ is not a slogan but a product name which could mean ‘two good’. In that regard, August Storck states in particular that, when used for confectionary, chocolate or ice cream, the mark applied for, like the mark nimm 2, is a proper, short and catchy name.

29 Secondly, August Storck considers that, when the relevant public purchases the goods for everyday consumption covered by the mark applied for, its level of attention is low. Thus, the relevant public will not make the mental effort to find any second meaning of the expression ‘2good’ and will only conclude that that expression means ‘two good’. At least, such an expression is ambiguous and could mean ‘to good’, ‘two good’ or ‘too good’. Furthermore, the General Court, it claims, did not give any example or proof for its statement, made in paragraph 27 of the judgment under appeal, that the word ‘too’, symbolised by the number 2, is being used with increasing frequency to describe sensations. Thus, the Court distorted the facts by introducing an alleged and unproven fact and basing its judgment thereon.

30 Thirdly, August Storck claims that, in paragraph 34 of the judgment under appeal, the General Court wrongly concluded that, even if the mark applied for is not regarded as an advertising slogan, it merely describes the gustatory qualities of the product for which registration is sought. According to the appellant, the expression ‘too good’ is too abstract to be considered as descriptive and is in no way linked to confectionary, chocolate and ice cream, in the way that expressions such as ‘sweet and tender’ or ‘soft and melting’ could be. Accordingly, the expression ‘too good’ used as a mark of a product would be unusual and surprising and would serve to identify it as originating from a particular undertaking.

Findings of the Court

31 With regard, first, to the appellant’s argument that the General Court did not take into account the visual perception of the mark applied for, it should be pointed out that, in the context of examining the first part of the single ground in the present appeal, it was found that the General Court had correctly applied the case-law principles relating to the examination of the descriptive character of a trade mark.

32 It must also be held that the General Court, in paragraphs 24 to 36 of the judgment under appeal, carried out a complete and detailed analysis of the descriptive character of the mark applied for. The General Court held, in particular, in paragraph 24 of that judgment, that ‘the number 2, combined with the word ‘good’, will be easily and immediately understood by the relevant public as meaning ‘too’.

33 That argument is therefore manifestly unfounded.

34 Secondly, it should be noted that the arguments of August Storck, seeking recognition of an error of assessment concerning the descriptive character of the mark applied for, in so far as it is not simply an ordinary advertising slogan but the name of a product with an ambiguous meaning, are intended to call into question the assessment of the facts made by the General Court. However, it is settled case-law of the Court of Justice that such arguments are inadmissible in so far as they do not, save where the facts are distorted, constitute a point of law subject, as such, to review by the Court of Justice on appeal.

35 Indeed, it must be noted that August Storck merely states that the General Court ignores and thus distorts the fact that the word ‘2good’ is not an advertising slogan, without indicating precisely the evidence alleged to have been distorted by the General Court or showing the errors of appraisal which, in its view, led to that distortion.

36 Finally, with regard to the argument made by August Storck contesting the descriptive character of the mark applied for, it suffices to note that that argument seeks to call into question the factual assessment made by the General Court in paragraph 34 of the judgment under appeal, according to which that mark merely describes a characteristic of the products in question. Thus, August Storck is in fact seeking to obtain from the Court of Justice a new assessment of the facts, without alleging in that regard any form of distortion of those facts by the General Court. However, since an appeal lies on points of law only, that argument must be rejected as manifestly inadmissible.

37 It follows from the foregoing considerations that the second part of the single ground of appeal must be rejected as, in part, manifestly inadmissible and, in part, manifestly unfounded.

The third part of the single ground of appeal

Arguments of the appellant

38 By the third part of its single ground of appeal, August Storck submits that the General Court did not fully and correctly apply the principles of equal treatment and of sound administration referred to in paragraph 38 of the judgment under appeal. In that regard, the appellant states that if the marks TooGood and 2chic could be registered by EUIPO, despite their potential promotional content, a similar decision should have been made with regard to the mark applied for.

Findings of the Court

39 It must be pointed out that, in paragraphs 38 to 42 of the judgment under appeal, the General Court thoroughly examined the complaint alleging the infringement by the Board of Appeal, having regard to EUIPO’s previous decision-making practice and the principles of equal treatment and of sound administration.

40 It should be pointed out that, in the context of that third part of the single ground of appeal, August Storck does not specifically identify the error of law allegedly vitiating the contested judgment and essentially confines itself to reproducing the arguments already submitted in the proceedings before the General Court.

41 It follows that the third part of the single ground of appeal must be rejected as manifestly inadmissible.

42 Consequently, the single ground of appeal raised by August Storck must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

43 It follows from the above that the appeal must be dismissed.

Costs

44 Under Article 137 of the Court’s Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings.

45 As the present order has been adopted prior to notification of the appeal to the defendant at first instance and, therefore, before the latter could have incurred costs, it is appropriate to decide that August Storck must bear its own costs.

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

1. The appeal is dismissed.

2. August Storck KG shall bear its own costs.

[Signatures]

* Language of the case: English.

Order of 11 May 2016, C-636/15 (August Storck v OHIM), ECLI:EU:C:2016:342.