Ecolab USA v EUIPO (ECOLAB) (EU trade mark - International registration designating the European Union : Judgment) [2017] EUECJ T-150/16 (13 July 2017)

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(EU trade mark — International registration designating the European Union — Word mark ECOLAB — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Equal treatment — Obligation to state reasons — Article 75 of Regulation No 207/2009)

Ecolab USA, Inc., established in Wilmington, Delaware (United States), represented by V. Töbelmann and C. Menebröcker, lawyers,

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

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 January 2016 (Case R 644/2015-4) relating to the international registration designating the European Union in respect of the word mark ECOLAB,

composed of V. Tomljenović (Rapporteur), President, A. Marcoulli and A. Kornezov, Judges,

1 On 18 January 2013, Ecolab Deutschland GmbH designated the European Union in international registration No 1180255 for the word sign ECOLAB. That registration was notified to the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 The goods and services in respect of which registration was sought are in Classes 1 to 12, 14, 16 to 18, 20 to 22, 24 to 28, 30, 35, 37, 38 and 40 to 45 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.

3 On 25 November 2013, the examiner decided provisionally to refuse protection for all of the goods and services in Classes 1 to 6, 10 and 42, and for certain goods in Class 17.

4 The grounds put forward in support of that refusal were the lack of distinctive character of the mark applied for and the descriptive character thereof with regard to the goods and services concerned, within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation.

5 By decision of 27 February 2014, following the observations submitted by Ecolab Deutschland GmbH in relation to the objections raised by the examiner, the latter confirmed, for the goods and services in question, the partial refusal of protection for the mark at issue in the European Union.

6 On 28 April 2014, Ecolab Deutschland GmbH filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009.

7 By decision of 13 October 2014, the Fourth Board of Appeal upheld the applicant’s appeal and remitted the case back to the examiner for further examination (Case R 1149/2014-4).

8 On 2 January 2015, the examiner issued a new provisional refusal of protection for services in Class 42 only, corresponding to the following description: ‘Scientific and technological services and research relating thereto; industrial analysis and research services; environmental testing and inspection services’.

9 In the absence of observations by Ecolab Deutschland GmbH, by decision of 17 March 2015, the examiner confirmed the provisional refusal of protection for the mark at issue in the European Union for the aforementioned services in Class 42.

10 The mark applied for was transferred by Ecolab Deutschland GmbH to the applicant, Ecolab USA Inc., which, on 30 March 2015, lodged an appeal against that decision pursuant to Articles 58 to 64 of Regulation No 207/2009.

11 By decision of 26 January 2016 (the ‘contested decision’), the Fourth Board of Appeal dismissed the appeal on the ground that the mark applied for was descriptive and lacked distinctive character for the services in question in Class 42, within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009, and that it had not been demonstrated that the mark had acquired distinctive character through use pursuant to Article 7(3) of Regulation No 207/2009.

12 In essence, first, the Board of Appeal considered that the relevant public was made up of English-speaking professionals established in the EU.

13 Secondly, as regards the descriptiveness of the mark applied for, it stated that the relevant public would understand the sign ECOLAB as a combination of the commonly used abbreviations ‘eco’, meaning ‘ecological’, and ‘lab’, which is an abbreviation of ‘laboratory’. Furthermore, it held that the sign ECOLAB presented a sufficiently clear and specific relationship with the services at issue, included in Class 42. As regards scientific, technological and research services, as well as industrial analysis and research, the sign ECOLAB could be understood, according to the Board of Appeal, as indicating that those services were provided by a laboratory that conducts scientific research, experiments or testing related to ecology. As regards environmental inspection and testing services, the Board of Appeal considered that the sign ECOLAB described those services as concerning the field of environmental protection. In addition, the Board of Appeal rejected the applicant’s arguments that the earlier registration No 1005780 of the sign ECOLAB, accepted by EUIPO, and the assessment made by the Cancellation Division in Case 5972 C concerning that registration demonstrated the lack of descriptive character of the sign ECOLAB at the time of the application for registration which was the object of the present action. Finally, the Board of Appeal held that the registrations of the sign ECOLAB made by national patent and trade mark offices in third countries, which were relied on by the applicant, could not undermine the conclusion on the descriptive character of that sign.

14 Thirdly, the Board of Appeal held that, since the contested mark would be perceived as descriptive of the services concerned, it was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

15 By application lodged at the Court Registry on 6 April 2016, the applicant brought the present action.

19 In support of its action the applicant raises four pleas in law, alleging: (i) infringement of Article 7(1)(c) of Regulation No 207/2009; (ii) infringement of Article 7(1)(b) and Article 7(2) of that regulation, read in conjunction with Article 7(3) thereof; (iii) infringement of the principles of equal treatment and legal certainty; (iv) infringement of the obligation to state reasons laid down in Article 75 of Regulation No 207/2009.

The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

20 The applicant submits, in essence, that the Board of Appeal wrongly held that the mark applied for was an indication of the kind of services concerned. However, the sign ECOLAB would not be perceived by the relevant public as a synonym of the services concerned nor as referring to those services and does not describe the quality, intended purpose or other characteristic of those services. Even if the sign ECOLAB could be understood by the relevant public as designating an ecological laboratory, there was no sufficient direct and specific relationship between the services concerned and the sign in question.

22 Article 7(1)(c) of Regulation No 207/2009 provides that 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 are not to be registered.

23 According to the case-law, Article 7(1)(c) of Regulation No 207/2009 is intended to prevent the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12).

24 Furthermore, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, deemed incapable, by their very nature, of fulfilling the essential function of the trade mark, namely that of identifying the commercial origin of the goods or services in order thereby to enable the consumer who acquired the goods or service designated by the mark 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 13).

25 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services at issue to enable the public concerned immediately to perceive, without further thought, a description of the goods and services at issue or one of their characteristics (see the judgment of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 14 and the case-law cited).

26 According to the case-law, a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgments of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 27, and of 22 May 2008, Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published, EU:T:2008:165, paragraph 31).

27 It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 17).

28 In addition, it must be held that, for EUIPO to refuse registration on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, it is sufficient that at least one of the possible meanings of the sign in question designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).

29 The arguments of the parties relating to the assessment set out by the Board of Appeal in the contested decision must be examined in the light of those foregoing considerations.

30 In the first place, as regards the relevant public, it should be recalled that, in paragraphs 19 and 20 of the contested decision, the Board of Appeal held, first, that the services concerned were directed at professionals and, second, it was necessary to assess the registrable character of the sign ECOLAB for the purposes of the application of Article 7(1)(c) of Regulation No 207/2009 on the basis of the perception of the sign by the English-speaking public of the European Union.

31 It should be noted that the applicant itself acknowledged at the hearing that the services concerned were directed at businesses. Thus the relevant public must be held to be composed of professionals. Furthermore, the English-language origin of the terms making up the sign ECOLAB is not disputed. Consequently, it is not necessary to call into question the Board of Appeal’s determination of the relevant public.

32 In the second place, for the purposes of the application of Article 7(1)(c) of Regulation No 207/2009, it is necessary to consider, on the basis of a given meaning of the word sign at issue, whether, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the sign applied for and the services in respect of which registration is sought (see, to that effect, the judgment of 15 May 2014, Katjes Fassin v OHIM (Yoghurt-Gums), T‑366/12, not published, EU:T:2014:256, paragraph 20).

33 First, as regards the meaning of the mark applied for, it must be observed that the sign ECOLAB is not a word in the English language. Contrary to what the applicant suggests, the Board of Appeal correctly established, by reference to an English dictionary, that the elements ‘eco’ and ‘lab’ were commonly used abbreviations for ‘ecology’ or ‘ecological’ and for ‘laboratory’ respectively. Moreover, the Board of Appeal noted, without being challenged on this point by the applicant, that combinations of words that include the abbreviations ‘eco’ or ‘lab’, such as ‘eco-friendly’ or ‘lab assistant’ are common in English.

34 The Board of Appeal did not commit any error of assessment in finding that the relevant public would perceive the sign ECOLAB as a combination of the abbreviations ‘eco’ and ‘lab’ and would be likely to attribute to it the meaning of ‘ecological laboratory’. In that regard, it must be observed that there is no perceptible difference, within the meaning of the case-law cited in paragraph 26 above, between the term ECOLAB and the sum of the parts of which it is composed. Hence, the English-speaking, professional consumer of those services would immediately understand the sign applied for, taken as a whole, and be likely to interpret it as meaning ‘ecological laboratory’.

35 That finding is not undermined by the applicant’s argument that the sign ECOLAB would be broken down to the elements ‘e’, ‘co’ and ‘lab’, which are likely to have other meanings, such as ‘earth’, ‘east’, ‘energy’ or ‘electronic’ for the letter ‘e’, ‘county’, ‘company’ or ‘cooperation’ for the element ‘co’, and ‘lab-ferment’ or ‘Labrador retriever’ for the element ‘lab’. It should be recalled that, as stated in paragraph 27 above, in order to establish that a sign has a descriptive character, the assessment of that character can only be made, first, in relation to the perception that the public concerned has of it and, second, in relation to the goods and services concerned. To the extent that the services concerned are scientific and technological services, industrial analysis and research services and environmental services, it must be held that the relevant public would divide the sign into two elements, ‘eco’ and ‘lab’, giving them the meanings ‘ecological’ and ‘laboratory’, which are the abbreviations that have most in common with ‘eco’ and ‘lab’ having regard to the services concerned. It must be observed that the other interpretations proposed by the applicant could not reasonably be upheld for the services concerned.

36 At the most, the applicant merely asserts that the elements making up the sign ECOLAB, taken individually, could refer to other meanings. However, in accordance with the case-law, as set out in paragraph 28 above, it suffices that one of the potential meanings of the sign applied for is descriptive having regard to the services at issue for its registration to be refused. It was sufficient for the Board of Appeal to find that, in one of its potential meanings, the sign ECOLAB could be understood by the relevant public, having regard to the services at issue, as meaning ‘ecological laboratory’.

37 Secondly, as regards the link between the mark applied for and the services covered, it must be observed that the applicant does not raise any argument that could call into question the existence of a sufficiently direct and specific relationship, within the meaning of the case-law cited in paragraph 25 above, between the sign ECOLAB, understood to mean ‘ecological laboratory’, and the services concerned.

38 It must be recalled that the Board of Appeal held that, for scientific, technological and research services and for industrial analysis and research services, the sign ECOLAB could be understood as indicating that those services were provided by a laboratory active in scientific research or experiments and testing related to ecological aspects and that, as regards environmental inspection and testing services, the sign ECOLAB described those services as concerning the field of environmental protection.

39 That assessment cannot be called into question by the applicant’s arguments that the link between the terms ‘laboratory’ and ‘ecological’ and the services concerned was vague and imprecise since the term ‘ecological’ could designate any service linked to environmental protection in the wider sense. Furthermore, the argument, which is made in respect of environmental inspection and testing services, that the term ‘environmental’ does not necessarily refer to environmental protection also cannot succeed. As regards those arguments, it must be held that, as recalled in paragraph 28 above, for EUIPO to refuse registration on the basis of Article 7(1)(c) of Regulation No 207/2009, it is sufficient that at least one of the possible meanings of the sign in question designates a characteristic of the goods or services concerned. Moreover, it cannot be denied that the term ‘ecological’, in at least one of its most common meanings, refers to the protection of the environment. In addition, as the applicant itself acknowledges, the combination of the words ‘laboratory’ and ‘ecological’ could designate services connected with the protection of the environment. It cannot be excluded that one of the characteristics of the services concerned could be connected to their provision by a laboratory in a manner that respects the environment or in the framework of its protection.

40 To the extent that the applicant submits that the Board of Appeal did not define the expression ‘ecological laboratory’ and did not specify how that expression designates the quality or intended purpose of the services concerned, it must be recalled that the Board of Appeal, in paragraph 23 of the contested decision, observed that the sign ECOLAB, understood as referring to the notion of ‘ecological laboratory’, would be interpreted as designating services provided by a laboratory that carries out environmentally friendly tests or which carries out experiments or scientific procedures concerning the ecological impact of goods, materials or substances for the purposes of research and analysis.

41 As regards the applicant’s argument that the services concerned are not specifically directed at ecological laboratories and are not usually intended for, or offered to, laboratories in general, it must be observed that, even if those claims were correct, the fact that the services offered by the applicant are not necessarily provided by a laboratory is insufficient, in itself, for it to be concluded that there is no descriptive character. As recalled in paragraphs 28 and 36 above, it is sufficient, in order to refuse registration, that at least one of the possible meanings of the sign in question designates a characteristic of the goods or services concerned. The registration of the mark was sought for scientific and technological services, research and related services, industrial analysis and research services, and environmental inspection and testing services. Having regard to the list of those services, irrespective of the applicant’s activities, it must be held that the fact that they are carried out or offered by an environmentally friendly laboratory, or in the context of environmental protection, or directed at that type of laboratory can be regarded as one of the potential characteristics of those services. Consequently, with regard to those services the term ECOLAB could designate one of their characteristics.

42 Thirdly, as regards the account to be taken of registrations by national patent and trade mark offices in the United States of America, Australia and New Zealand, it suffices to observe that those registrations, made in accordance with the law applicable in those third countries, do not enable it to be established that, in the present case, the Board of Appeal committed an error of law in the application of Article 7(1)(c) of Regulation No 207/2009.

43 First, the provisions that appear under Title XIII of Regulation No 207/2009 do not lay down any obligation for EUIPO to recognise decisions on the registration of an international mark taken in third countries. Second, the EU trade mark regime is an autonomous system, made up of a set of rules and pursuing objectives specific to it, its application being independent of any national system (see judgment of 12 December 2013, Rivella International v OHIM, C‑445/12 P, EU:C:2013:826, paragraph 48 and the case-law cited). Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO, and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in 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 (judgments of 21 January 2009, Hansgrohe v OHIM (AIRSHOWER), T‑307/07, not published, EU:T:2009:13, paragraph 45; of 25 March 2014, Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, not published, EU:T:2014:154, paragraph 53; and of 24 June 2014, 1872 Holdings v OHIM — Havana Club International (THE SPIRIT OF CUBA), T‑207/13, not published, EU:T:2014:570, paragraph 32).

44 It follows from the foregoing that the Board of Appeal did not err in law in finding that the mark applied for was descriptive of the services concerned, within the meaning of Article 7(1)(c) of Regulation No 207/2009. The first plea in law must therefore be rejected.

The second plea in law, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, read in conjunction with Article 7(3) thereof

45 The applicant submits, in essence, that the sign ECOLAB is distinctive. According to the applicant, it has served as the indication of origin in the mind of the relevant public since the applicant has used the mark ECOLAB widely and with great success for decades, including for the services concerned.

47 According to settled case-law, it is apparent from the wording of Article 7(1) of Regulation No 207/2009 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign to be ineligible for registration as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 21 November 2013, Heede v OHIM (Matrix-Energetics), T‑313/11, not published, EU:T:2013:603, paragraph 68).

48 Since, as follows from the conclusion set out in paragraph 44 above, the Board of Appeal was fully entitled to hold that the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 was capable of leading to the refusal of registration of the mark applied for, it is not necessary to rule on the merits of this plea in law by which the applicant complains that the Board of Appeal failed to recognise the distinctive character of those marks.

49 As regards the applicant’s argument that the mark applied for acquired distinctive character through use as a result, in particular, of its international registration, it must be recalled that, according to Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal referred to in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a mark if it has acquired distinctiveness for the goods or services for which registration has been sought. It is apparent from the case-law that, for a mark to have acquired distinctiveness through use, it is necessary that at least a significant proportion of the relevant public can, by virtue of that mark, identify the goods or services concerned as originating from a particular undertaking (see judgment of 29 April 2004, Eurocermex v OHIM (Shape of a beer bottle), T‑399/02, EU:T:2004:120, paragraph 42 and the case-law cited).

50 The matters capable of demonstrating that the mark has come to identify the product or service concerned must be assessed globally. In the context of that assessment, the following factors may be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 49 and 51, and of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 31). If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies the goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) of Regulation No 207/2009 is satisfied (judgment of 26 March 2015, Bateaux mouches v OHIM (BATEAUX MOUCHES), T‑72/14, not published, EU:T:2015:194, paragraph 66).

51 Furthermore, it is apparent from case-law that, in order for the registration of a trade mark to be accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through use of that trade mark must be demonstrated in the part of the European Union where it was devoid of such character under Article 7(1)(b), (c) and (d) of that regulation (judgments of 21 April 2010, Schunk v OHIM (Representation of part of a chuck), T‑7/09, not published, EU:T:2010:153, paragraph 40, and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, not published, EU:T:2013:148, paragraph 76).

52 However, proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material (see, to that effect, judgment of 12 September 2007, Glaverbel v OHIM (Texture of a glass surface), T‑141/06, EU:T:2007:273, paragraphs 41 and 42).

53 In the present case, in order to substantiate the claim that distinctiveness had been acquired through use, the applicant produced a copy of an international classification of the world’s biggest companies having regard to capitalisation, turnover, profits and capital, according to which, in 2015, its global turnover was 34.1 billion United States dollars (USD, about EUR 32.6 billion) and it was classified in the 498th position of that classification. In that regard, it suffices to observe that that evidence, which only refers to the global turnover and not to that obtained by the provision of specific services supplied under the mark applied for in the European Union, is not capable of proving that, at the date of the application for registration, the mark applied for had acquired distinctive character throughout the European Union.

The third plea in law: breach of the principles of equal treatment and the protection of legitimate expectations

55 The applicant complains, in essence, that the Board of Appeal carried out, in the present case, an assessment of the sign ECOLAB which differed from the assessment it carried out in the context of earlier decisions by EUIPO, namely, first, the assessment carried out by the examiner when the sign which was the object of the international registration No 1005780 for, in particular, services identical to the services at issue in the present case and, second, the assessment carried out by the Cancellation Division where, in the context of the proceedings 5972 C for a declaration of invalidity, the partial invalidity for a third party mark was declared on the basis of the international registration No 1005780 of the sign ECOLAB for, in particular, services of computer system and computer software design within Class 42.

57 In that regard, it should be borne in mind that it is clear from settled case-law that the legality of the decisions of the Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of EUIPO, which cannot, in any event, be binding on the European Union courts (see, to that effect, judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 36; and judgment of 2 June 2016, Revolution v EUIPO (REVOLUTION), T‑654/14, not published, EU:T:2016:334, paragraph 57).

58 Although, having regard to the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, 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 legality, such that there cannot be equality in an unlawful act, and a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to his benefit or the benefit of someone else (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76). Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered, and that examination must be undertaken in each individual case since 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77).

59 In the present case, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other complaints that that examination led the Board of Appeal, correctly, to oppose registration of the mark applied for on the basis of the absolute ground for refusal referred to in Article 7(1)(c) of Regulation No 207/2009.

60 Consequently, since the legality of the contested decision regarding the registrability of the sign ECOLAB as an EU trade mark for the goods in question is established directly on the basis of Article 7(1)(c) of Regulation No 207/2009, it is apparent from the case-law cited in paragraph 58 above that the contested decision cannot be called into question by virtue of the mere fact that the Board of Appeal did not, in the present case, follow EUIPO’s decision-making practice. That consideration applies even in cases where such an earlier practice concerns identical or similar signs designating identical or similar goods or services (see, to that effect and by analogy, order of 12 February 2009, Bild digital and ZVS, C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraph 19).

61 Moreover, it cannot be maintained that the Board of Appeal has infringed the principle of legal certainty, since that principle makes it compulsory for each trade mark application to be subject to a specific assessment (judgment of 2 June 2016, REVOLUTION, T‑654/14, not published, EU:T:2016:334, paragraph 60).

Fourth plea in law, alleging infringement of Article 75 of Regulation No 207/2009

63 The applicant submits that the Board of Appeal infringed the obligation to state reasons laid down in the first sentence of Article 75 of Regulation No 207/2009 when it restricted itself to relying on the principle of legality in order to reject the arguments based on the existence of the international registration No 1005780 of the sign ECOLAB, in which the European Union was designated, and of EUIPO’s decision in the context of the proceedings for a declaration of invalidity 5872 C, brought by the applicant against a third party mark, on the basis of that international registration.

65 According to settled case-law, under Article 75 of Regulation No 207/2009, decisions of EUIPO are required to state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 14 and the case-law cited).

66 In particular, where EUIPO refuses to register a sign as an EU trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal — absolute or relative — which precludes that registration and the legal provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on. Such a statement of reasons is, in principle, sufficient (judgment of 9 July 2008, Reber v OHIM Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 46).

67 In the present case it is common ground that the Board of Appeal stated that Article 7(1)(c) of Regulation No 207/2009 precluded the registration of the mark applied for on the ground that it was descriptive of the services for which registration was sought.

68 First of all, the Board of Appeal justified that refusal by defining the relevant public as being composed of English-speaking professionals established in the European Union (paragraphs 19 and 20 of the contested decision), by determining the meaning of the sign ECOLAB from that of the two elements of which it is constituted, namely ‘eco’ and ‘lab’, and by establishing that, having regard to the services concerned, the sign would be perceived by the relevant public as being descriptive of those services and presenting a direct relationship with them (paragraphs 21 to 23 of the contested decision).

69 Next, the Board of Appeal referred to the earlier EUIPO decisions relied on by the applicant, stating that they could not disprove the descriptive character of the sign for the services concerned, which had been established on the basis of regulations on the EU trade mark (paragraph 24 of the contested decision). In that regard it must be observed that the Board of Appeal did not explicitly set out the reasons why the contested decision differed from those adopted by the lower-ranking adjudicating bodies of EUIPO relied on by the applicant. However, even though such an explanation would have been desirable, particularly as regards the examiner’s decision regarding international registration No 1005780 in relation to the same sign for, in particular, services identical to those in question in the present case, which, at the time that the contested decision was adopted, were still valid and would remain so until 2019, it should be recalled, as stated in paragraph 60 above, that the Board of Appeal was not bound by EUIPO’s earlier decision-making practice.

70 Thus, since the Board of Appeal sufficiently set out the facts and legal considerations that were of decisive importance to the contested decision, as regards the impossibility of registering the mark applied for on the ground that it was descriptive of the services concerned, it was not required to adopt specific reasoning to justify its decision in relation to the earlier EUIPO decisions invoked by the applicant (see, to that effect, order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 38).

71 Finally, the Board of Appeal examined and rejected the applicant’s argument based on the earlier national registrations, recalling that the EU trade mark regime is an autonomous system and applies independently of any national trade mark system and that, consequently, EUIPO is not bound by decisions taken at national level as to whether a sign is registrable, even where it is identical to the national mark (paragraph 25 of the contested decision).

72 It follows from the foregoing that the fourth plea must be rejected and the action dismissed in its entirety.

73 Under Article 134(1) 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Ecolab USA v EUIPO (ECOLAB) (EU trade mark - International registration designating the European Union : Judgment) [2017] EUECJ T-150/16 (13 July 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T15016.html Cite as: EU:T:2017:490, ECLI:EU:T:2017:490, [2017] EUECJ T-150/16

Court of Justice of the European Communities (including Court of First Instance Decisions)