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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Ashoka v OHMI (Intellectual property) [2008] EUECJ T-186/07 (2 July 2008) URL: http://www.bailii.org/eu/cases/EUECJ/2008/T18607.html Cite as: [2008] ETMR 70, [2008] EUECJ T-186/7, [2008] EUECJ T-186/07

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(Community trade mark Application for Community word mark DREAM IT, DO IT! Absolute ground for refusal Lack of distinctive character Article 7(1)(b) of Regulation (EC) No 40/94)

In Case T-186/07,

Ashoka, established in Arlington, Virginia (United States of America), represented by A. Link and A. Jaeger'Lenz, lawyers,

applicant,

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

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 15 March 2007 (Case R 635/2006-1), concerning the registration of the word mark DREAM IT, DO IT! as a Community trade mark,

composed of M. Vilaras (Rapporteur), President, M. Prek and V. Ciucă, Judges,

Registrar: K. Pocheć, Administrator,

having regard to the application lodged at the Registry of the Court on 29 May 2007,

having regard to the response lodged at the Registry of the Court on 17 August 2007,

further to the hearing on 13 March 2008,

gives the following

Background to the dispute

1. On 19 May 2004, the applicant, Ashoka, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The mark for which registration was sought is the word mark DREAM IT, DO IT!.
3. By letter of 13 September 2004, received by OHIM on 15 September 2004, the applicant, in accordance with Article 44(2) of Regulation No 40/94, amended the list of services covered by its application for a Community trade mark. The services in respect of which registration was sought, as set out in the amended application, are in Classes 35, 36, 41 and 45 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, and correspond to the following descriptions:

Class 35: 'Promoting and providing professional assistance to individuals for the exchange of socially progressive ideas regarding public entrepreneurship and with pattern-changing ideas in a variety of fields including social, economic and environmental disciplines';

Class 36: 'Financial assistance to individuals and organisations for the exchange of socially progressive ideas regarding public entrepreneurship and with pattern-changing ideas in a variety of fields including social, economic and environmental disciplines; charitable services (fundraising)';

Class 41: 'Educational services, namely publishing';

Class 45: 'Social services'.

4. By decision of 13 March 2006, the examiner refused, under Article 38 of Regulation No 40/94, the application for all services covered by it on the ground that the trade mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
5. On 11 May 2006, the applicant filed an appeal at OHIM under Articles 57 to 62 of Regulation No 40/94 against the examiner's decision.
6. By decision of 15 March 2007 ('the contested decision'), notified to the applicant on 29 March 2007, the First Board of Appeal dismissed the applicant's appeal and confirmed the examiner's decision.
7. The Board of Appeal held, essentially, that the trade mark applied for 'transmit[ted] the message that the services applied for [would] allow the consumer to fulfil [his] dreams' and that it 'animat[ed] the consumer to realise [his] dreams; it encourage[d] him to try to achieve them' (paragraph 18 of the contested decision). The Board of Appeal therefore concluded that the mark 'function[ed] first and foremost as an incitement addressed to the relevant public aiming to promote the services in question' and that, therefore, 'there [was] no reason to believe that the potential customer [would] see these words as forming a trade mark denoting a particular commercial source of the services concerned' (paragraph 24 of the contested decision). The Board of Appeal held that it followed that 'the sign applied for as a whole [did] not have the capacity to communicate to the relevant consumers that [the] services with which it [was] to be used [were] those of the applicant and [could not] serve the basic function of a trade mark' (paragraph 26 of the contested decision). The Board of Appeal stated that the presence of an exclamation mark at the end of the expression constituting the trade mark applied for could not alter that finding, since it was a punctuation mark often used at the end of exhortatory and promotional formulas (paragraph 27 of the contested decision).

Forms of order sought

8. The applicant claims that the Court should:

annul the contested decision;

order OHIM to pay the costs.

9. OHIM contends that the Court should:

dismiss the application;

order the applicant to pay the costs.

Law

10. In support of its action, the applicant relies on a single plea in law alleging infringement of Article 7(1)(b) of Regulation No 40/94.

Arguments of the parties

11. The applicant asserts that the contested decision infringes Article 7(1)(b) of Regulation No 40/94. Contrary to what was held by the Board of Appeal, the trade mark applied for is, it argues, capable of serving as an indicator of the commercial origin of services, since it possesses a minimum degree of distinctive character, which is sufficient, according to the case-law, to allow it to be registered.
12. The applicant relies on the case-law according to which the registration of a mark consisting of an advertising slogan is not excluded, per se, by virtue of its use as a slogan and adds that, for such a sign to be refused registration on the basis of the absolute ground for refusal referred to in Article 7(1)(b) of Regulation No 40/94, the slogan concerned must have become customary in the current language or in the bona fide and established practices of the trade (Case C-517/99 Merz & Krell [2001] ECR I-6959, paragraph 37).
13. It is for this reason that the Court took the view that the signs LIVE RICHLY and BEST BUY were devoid of distinctive character and could not be registered as Community trade marks, as the link between those signs and the services covered by the respective applications for registration was obvious (see, respectively, Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411 and Case T-122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II-2235).
14. The present case, the applicant contends, is different, since neither the word'dream' nor the expression 'dream it, do it!' has become customary in the current language or in the bona fide and established practices of the trade to refer to the services covered by the application for registration. Although one might dream of a good life and being happy, in love or being healthy, one does not dream of the services covered by the trade mark applied for.
15. The Board of Appeal's assertion, that the words comprising the trade mark applied for convey an immediately comprehensible meaning in relation to the services concerned, is therefore not correct. None of those services could be described by the trade mark applied for, either directly or in a way that promotes the advantages provided by the service in question. It is therefore untrue that the trade mark applied for conveys a laudatory promotional message to the relevant consumer concerning the market value of the services in question.
16. Concerning specifically the services in Classes 35 and 36 referred to in the application for registration, the applicant states that the expression 'public entrepreneurship' used in the description of those services refers to an innovative management strategy in the public sector. However, no direct link can be established between the fulfilment of one's dreams and the exchange of ideas related to 'public entrepreneurship'. The same applies to the services linked to the exchange of ideas in social, economic and environmental disciplines. Lyrical concepts, such as 'dreams', are neither relevant in these areas nor customary in the current language or in the bona fide and established practices of the trade, in relation to the services covered by the trade mark applied for.
17. Nor does the trade mark applied for convey any message in relation to the publishing services in Class 41, also included in the application for registration. As for the social services in Class 45, the applicant accepts that one might possibly dream about being a beneficiary of them. However, in order to promote such services to the relevant consumers, it would be necessary to use slogans such as 'dream it, take it!' or 'dream it, enjoy it!'. By contrast, it is not clear what 'do it!' means when addressed to the target public of social services. It follows that, when presented with the trade mark applied for, the relevant consumers are left wondering what it takes to fulfil their dreams; that trade mark does not provide them with any relevant information to this end, but merely provokes their imagination. Such vagueness in the trade mark applied for, in addition to its short wording, which makes it easy for the relevant public to memorise it, are sufficient to provide it with the minimum distinctive character required for its registration.
18. Lastly, the applicant cites the trade marks BEAUTY ISN'T ABOUT LOOKING YOUNG BUT LOOKING GOOD, CREATING YOUR FUTURE and WE GET IT DONE, which were permitted registration following various decisions of the OHIM Boards of Appeal, and the trade marks YOU HAVE TO WEAR IT TO BELIEVE IT, YOU WON'T BELIEVE YOUR EYES, TAKE IT EASY and TAKE IT AS IT IS, which were accepted by the OHIM examiners and registered as Community trade marks, despite the fact that they are all promotional slogans containing messages about the characteristics and the market value of various goods and services covered by them. According to the applicant, there is no reason why OHIM should have followed a different practice in the present case.
19. OHIM disputes the applicant's arguments.

Findings of the Court

20. Under Article 7(1)(b) of Regulation No 40/94, 'trade marks which are devoid of any distinctive character' may not be registered. In addition, Article 7(2) of Regulation No 40/94 provides that '[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community'.
21. According to case-law, the signs referred to in Article 7(1)(b) of Regulation No 40/94 are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (Case T-79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II-705, paragraph 26, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 37). That is true, in particular, for signs which are commonly used in the marketing of the goods or services concerned (LIVE RICHLY, cited in paragraph 13 above, paragraph 65).
22. The registration of a mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECR I-10031, paragraph 41, and LIVE RICHLY, cited in paragraph 13 above, paragraph 66).
23. However, a sign which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94 only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (see Case T-216/02 Fieldturf v OHIM (LOOKS LIKE GRASS ... FEELS LIKE GRASS ... PLAYS LIKE GRASS) [2004] ECR II-1023, paragraph 25, and LIVE RICHLY, cited in paragraph 13 above, paragraph 66 and the case'law cited).
24. Moreover, the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (LOOKS LIKE GRASS... FEELS LIKE GRASS... PLAYS LIKE GRASS, cited in paragraph 23 above, paragraph 26, and LIVE RICHLY, cited in paragraph 13 above, paragraph 67).
25. In the present case, it should be borne in mind, first, that the Board of Appeal correctly held, at paragraph 16 of the contested decision, that, as the services covered by the trade mark applied for were intended for the general public, the public concerned by those services was the general consuming public. The distinctive character of the mark sought must therefore be assessed taking into account the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect (LIVE RICHLY, cited in paragraph 13 above, paragraph 69).
26. In addition, as the trade mark applied for is composed entirely of English words, the Board of Appeal was also correct to decide to take account of the perception which the average English-speaking consumer will have of the trade mark applied for. If it is proved that the trade mark applied for will not be perceived, by that consumer, as an indication of the commercial origin of the services in question, that circumstance will be sufficient for registration of that mark to be refused.
27. It should be borne in mind, secondly, that the trade mark applied for consists of two short orders ('dream it' and 'do it!'), which, placed one after the other and separated by a comma, form a grammatically and syntactically correct sequence, which is logically coherent and will be noticed immediately by the relevant English-speaking public. As the Board of Appeal correctly stated at paragraph 18 of the contested decision, having regard to the meaning, in English, of the trade mark applied for, it is undeniable that the relevant English-speaking public will see it as an invitation or an encouragement to achieve their dreams and will understand the message that the services covered by that trade mark will allow them to realise their dreams. The Board of Appeal was also correct to hold, at paragraph 27 of the contested decision, that the presence of an exclamation mark at the end of the trade mark applied for does not alter that finding, since imperative phrases regularly end with that punctuation mark, the use of which is insufficient to confer the minimum distinctive character on an ordinary promotional slogan.
28. In the light of those considerations, the Board of Appeal concluded that the relevant English-speaking consumer would not see, in the trade mark applied for, an indication of the commercial origin of the services which it covers, but rather a simple promotional and advertising message (paragraphs 19 to 24 of the contested decision).
29. The applicant disputes that finding, maintaining, first, that such use of the trade mark applied for is not customary in the current language or in the bona fide and established practices of the trade. In putting forward that argument, which relies upon Merz & Krell, cited in paragraph 12 above (paragraph 37), the applicant fails to have regard to the fact that that case concerns a question referred for a preliminary ruling, within the terms of Article 234 EC, in respect of the interpretation of Article 3(1)(d) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the wording of which is the same as that of Article 7(1)(d) of Regulation No 40/94.
30. It is not appropriate to limit the scope of Article 7(1)(b) of Regulation No 40/94 to only those trade marks for which registration has been refused on the basis of Article 7(1)(d) thereof by reason of the fact that they are commonly used in business communications and, in particular, in advertising. Each of the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination (OHIM v Erpo Möbelwerk, cited in paragraph 22 above, paragraphs 39 and 40).
31. It follows that that argument of the applicant must be excluded as irrelevant.
32. Second, the applicant claims, in essence, that the trade mark applied for will not transmit any clear and comprehensible information regarding the services covered by that mark to the relevant English-speaking consumers. In that regard, it should be noted that, even if it were to be accepted that the elements capable of establishing the absolute grounds for refusal under Article 7(1)(b) and (c) of Regulation No 40/94 could overlap with each other to some extent, it is none the less true that each of those grounds has its own sphere of application (Case T-359/99 DKV v OHIM (EuroHealth) [2001] ECR II-1645, paragraph 48).
33. Therefore the important factor, for the application of Article 7(1)(b) of Regulation No 40/94 to a mark comprised of an advertising slogan, is that mark's distinctive character, or lack of it, in relation to the goods or services for which its registration as a Community trade mark is sought.
34. In that regard, in should be observed that, contrary to what the applicant claims, the word 'dream' is currently used in English not only to describe dreams and the desire for happiness and success in private life, but also to describe visions and aspirations in public fields, that is to say, inter alia, in political, social, economic, environmental and educational disciplines.
35. An encouragement or an invitation to achieve one's dreams addressed to a consumer is, therefore, entirely conceivable in the context of the services covered by the trade mark applied for and will be perceived as meaning that those services can help to realise dreams and aspirations.
36. The question of ascertaining whether that message is, or is not, directly descriptive of the services in question within the meaning of Article 7(1)(c) of Regulation No 40/94 is not, as such, relevant in the context of the absolute ground for refusal referred to in Article 7(1)(b) of that regulation. The absolute ground for refusal referred to in Article 7(1)(b) of Regulation No 40/94 concerns a separate issue, namely that of ascertaining whether the relevant public will see, in that message, an indication of the commercial origin of the services in question.
37. That is not, however, the situation in the present case. Having regard to its content, the trade mark applied for will, undoubtedly, be perceived by the relevant English-speaking public as a promotional and advertising slogan, which could refer to services of various commercial origins. That is all the more probable as the trade mark applied for calls clearly to mind notions of action and dynamism, by following the first order, 'dream it', with a second, short and urgent, order, 'do it!', which refers to the idea of a swift achievement of that which has just been dreamed of. On account of the positive and attractive characteristics of the concepts of action and of dynamism, advertisements often refer to them, even in the context of goods or services for which those concepts do not appear, at first glance, to be relevant.
38. The Board of Appeal was therefore fully entitled to find that the trade mark applied for would not be perceived, by the relevant English-speaking public, as an indication of the commercial origin of the services in question. It follows that that mark is devoid of distinctive character.
39. Finally, the applicant's argument that other signs which are advertising slogans have been registered as Community trade marks must be rejected as irrelevant.
40. According to settled case-law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community Courts, and not on the basis of previous practice in the decisions of the Boards of Appeal (see Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraph 71 and the case-law cited).
41. It follows from all of the foregoing that the Board of Appeal's refusal to register the trade mark applied for did not infringe Article 7(1)(b) of Regulation No 40/94. Consequently, the action must be dismissed as unfounded.

Costs

42. Under Article 87(2) of the Court's Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. As the applicant 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 COURT OF FIRST INSTANCE (Fifth Chamber)

hereby:

1. Dismisses the action;

2. Orders Ashoka to pay the costs.










Vilaras

Prek

Ciucă

Delivered in open court in Luxembourg on 2 July 2008.










E. Coulon

M. Vilaras

Registrar

President

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* Language of the case: English.