Der EuGH hat am gestrigen Tag eine Entscheidung bestätigt, wonach das Wortzeichen „DIRECT DRIVE“ als Gemeinschaftsmarke nicht eintragungsfähig ist. Dies wurde u.a. damit begründet, dass die englische Bezeichung direct-drive sich auf alle Geräte bezieht, die direkt durch einen Motor angetrieben werden.
(„…. ‘direct drive’ referred to the concept of appliances driven directly by a motor, without an intervening belt or gearbox, thus allowing more effectiveness. Since all of the goods concerned are appliances containing motors and can be operated by a direct-drive system..“)
Es fehlt dem Zeichen damit an Unterscheidungskraft und es ist beschreibend (lack of distinctive character +descriptive sign)
Verkehrskreise (relevant public) sind Bewohner des UK und Maltas.
(Community trade mark – Application for Community word mark DIRECT DRIVE – Absolute grounds for refusal – Descriptive character and lack of distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑561/10,
LG Electronics, Inc., established in Seoul (South Korea), represented by M. Graf, lawyer,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 22 September 2010 (Case R 1027/2010‑2), relating to an application for registration of the word sign DIRECT DRIVE as a Community trade mark,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz (Rapporteur), President, I. Labucka and D. Gratsias, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 8 December 2010,
having regard to the response lodged at the Registry of the Court on 17 February 2011,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Background to the dispute
1 On 7 January 2010 the applicant, LG Electronics, Inc. filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Regulation (EC) No 207/2009 on the Community trade mark (OJ 2009 L 78, p.1).
3 The goods in respect of which registration was sought are in Classes 7 and 11 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: ‘Electric washing machines for household purposes; electric vacuum cleaners; automatic dishwashers’;
– Class 11: ‘Electric laundry dryers; air conditioners’.
4 By decision dated 7 April 2010, the examiner refused the application for registration in respect of all the goods concerned on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
6 By decision of 22 September 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal, concluding that registration of the mark applied for should be refused for lack of distinctive character and on account of its descriptive character, pursuant to Article 7(1)(b) and (c) of Regulation No 207/2009.
7 It held, in essence, that the English expression ‘direct drive’ referred to the concept of appliances driven directly by a motor, without an intervening belt or gearbox, thus allowing more effectiveness. Since all of the goods concerned are appliances containing motors and can be operated by a direct-drive system, the mark applied for was, in its view, understood by the relevant public, namely English-speaking consumers, in particular those from the United Kingdom, Ireland and Malta, as a description of the goods concerned. Registration therefore had to be refused under Article 7(1)(c) of Regulation No 207/2009.
8 Moreover, the Board of Appeal found that the general public, relevant for the examination of the application for registration, understood the expression ‘direct drive’ as a reference to a type of transition mechanism in an engine and not as an indication of the commercial origin of the goods concerned. In its view, since the mark applied for contains no additional element, such as to make it unusual, it did not possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought
– annul the contested decision;
– order OHIM to pay the costs.
– dismiss the application;
– order the applicant to pay the costs.
11 In support of its action, the applicant puts forward three pleas in law. The first alleges infringement of Article 7(1)(c) of Regulation No 207/2009. The second alleges infringement of Article 7(1)(b) of that regulation. The third plea alleges failure to take into account prior registrations of and applications for Community and national trade marks.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
12 The applicant claims that the Board of Appeal failed to take into account the fact that the English term ‘drive’ had as its primary meaning ‘a trip or journey in a car’. Accordingly, consumers would not immediately understand, without further thought, the mark applied for as a description of the technical characteristics of the goods covered.
14 Article 7(1)(c) of Regulation No 207/2009 prohibits registration of ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark (Case C‑191/01 P OHIM v Wrigley  ECR I‑12447, paragraphs 30 and 31, and judgment of 2 April 2008 in Case T‑181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 35).
15 The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve, in normal usage from the point of view of the public concerned, to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration was sought (Case T‑207/06 Europig v OHIM (EUROPIG)  ECR II‑1961, paragraph 26, and judgment of 21 May 2008 in Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraph 21).
16 According to settled case-law, a sign will be descriptive if there is a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (EUROPIG, paragraph 27, and STEADYCONTROL, paragraph 36).
17 Article 7(1)(c) of Regulation No 207/2009 reflects the public interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (see judgment of 6 March 2007 in Case T‑230/05 Golf USA v OHIM (GOLF USA), not published in the ECR, paragraph 26 and the case-law cited).
18 It should also be noted that the descriptiveness of a sign may be assessed only, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (STEADYCONTROL, paragraph 38, and E, paragraph 23). A mark’s descriptive character must be assessed in relation to the goods and services for which the mark was registered and in the light of the presumed perception of an average consumer of the category of goods and services in question, who is reasonably well informed and reasonably observant and circumspect.
20 As regards the relevant public in the present case, it is undisputed that the goods concerned are intended for average consumers and that, since the mark applied for is composed of English terms, the perception of the English-speaking public of the European Union, namely that of the United Kingdom, Ireland and Malta, should be taken into account. In those circumstances, it must be assessed whether, for that public, there is a sufficiently direct and specific relationship between the mark applied for and the characteristics of the goods applied for.
22 In that regard, it should be noted that, according to settled case-law, a sign must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods and services concerned (OHIM v Wrigley, paragraph 32, and judgment of 9 March 2010 in Case T-15/09 Euro‑Information v OHIM (EURO AUTOMATIC CASH), not published in the ECR, paragraph 39).
23 As the Board of Appeal stated at paragraph 19 of the contested decision, the English word ‘drive’ also means ‘a mechanism for transmitting (esp.rotary) motion to the wheels of a vehicle, a turntable etc’. Moreover, as is stated in paragraph 20 of the contested decision, the expression ‘direct drive’, which constitutes the mark applied for, has a specific meaning in English, which is ‘driven directly by the motor, without an intervening belt’.
24 In that regard, it should be recalled that, in the present case, the goods concerned are all electric household appliances in Classes 7 and 11 comprising an electronic motor and can be operated by a ‘direct drive’ system, that is to say a mechanism which takes the power coming from a motor without any reductions, such as those generated by a gearbox, and which thus allows more effectiveness. As the examiner established, which the applicant did not contest before the Board of Appeal, the expression ‘direct drive’ is commonly used in that sense on the market for those products.
25 Therefore, the Board of Appeal was right to conclude that the mark applied for, used in connection with the goods concerned, will be directly understood by the English-speaking public as a description of the technical features of those goods, so that Article 7(1)(c) of Regulation No 207/2009 prevents registration of the mark applied for.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
28 There is a measure of overlap between the scope of Article 7(1)(b) of Regulation No 207/2009 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(c) being distinguished from Article 7(1)(b) in that it only covers one specific circumstance in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM  ECR II‑0000, paragraph 47). Therefore, a sign which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of that regulation (see judgment of 11 February 2010 in Case T‑289/08 Deutsche BKK v OHIM (Deutsche BKK), not published in the ECR, paragraph 53 and the case-law cited; see, by analogy, Case C‑363/99 Koninklijke KPN Nederland  ECR I‑1619, paragraph 86, and Case C‑265/00 Campina Melkunie  ECR I-1699, paragraph 19).
The third plea, alleging OHIM’s failure to take into account prior registrations of and applications for Community and national trade marks
29 The applicant submits that OHIM previously registered, for the same classes of goods, the Community trade mark INVERTER DIRECT DRIVE containing the elements of the mark applied for, supplemented by the term ‘inverter’, which it considers to be clearly descriptive. In its view, although it is in principle correct that the Board of Appeal is not bound by such prior decisions, that must not be misunderstood as meaning that the Board is not obliged to check facts and evidence which is presented to it in connection with such decisions.
31 It follows from the case-law that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. Although, in the light of the principles of equal treatment and of sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must thus be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraphs 73 to 77 and the case-law cited).
33 Moreover, the applicant refers to a word mark registered in Canada and another word mark applied for in that country, two marks that are identical or similar to the mark applied for and concern comparable products. It submits that, although the relevant provisions of Canadian law are not dissimilar to those applicable to the registration of Community trade marks, since trade marks that are clearly descriptive are not eligible for registration, no absolute ground for refusal has been raised against those signs. Furthermore, Canada belongs to the linguistic area in which the mark applied for originated.
34 In that regard, it is sufficient to recall that the Community trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica)  ECR II-3829, paragraph 47; see, to that effect, judgment of 21 January 2009 in Case T‑399/06 giropay v OHIM (GIROPAY), not published in the ECR, paragraph 46). Consequently, the registrability or protectability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, OHIM and, as the case may be, the European Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated (see, to that effect, Case T‑471/07 Wella v OHIM (TAME IT)  ECR II‑3377, paragraph 35).
37 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since LG Electronics, Inc. has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Third Chamber)
1. Dismisses the action;
2. Orders LG Electronics, Inc. to pay the costs.
Delivered in open court in Luxembourg on 22 November 2011.