Ecolab USA v EUIPO (SOLIDPOWER) (EU trade mark - Judgment) [2019] EUECJ T-40/18 (17 January 2019)

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(EU trade mark — International registration designating the European Union — Word mark SOLIDPOWER — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EU) 2017/1001)

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

European Union Intellectual Property Office (EUIPO), represented by K. Kompari and D. Walicka, acting as Agents,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 9 November 2017 (Case R 1182/2017-5), relating to the international registration designating the European Union in respect of the word mark SOLIDPOWER,

composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu‑Matei, Judges,

having regard to the application lodged at the Court Registry on 24 January 2018,

1 On 31 May 2016 Ecolab Deutschland GmbH obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1 310 671 designating the European Union in respect of the word mark SOLIDPOWER. 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 The goods and services in respect of which registration was sought are in Classes 1, 3, 5, 9 and 37 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 1: ‘Chemical products used in industry; detergents for use in industrial and manufacturing processes; cleaning compositions for industrial purposes; chemical products used in warewashing processes; water treatment chemicals; chemical degreasing agents’;

– Class 3: ‘Warewashing detergents; pre-soaks; rinses (detergents); rinse additives for dishwashing machines; cleaning, polishing, scouring and abrasive preparations for cutlery, crockery, dishes and cookware’;

– Class 9: ‘Measuring apparatus; dosing apparatus and instruments; computerised apparatus and instruments for controlling measuring apparatus and dosing apparatus and instruments; computer software for the aforementioned goods’;

– Class 37: ‘Installation, repair and maintenance of warewashing machines and dishwashers and control-systems’.

3 On 21 October 2016 EUIPO sent Ecolab Deutschland a notification of provisional refusal of protection for the mark at issue in the European Union in respect of all the goods and services covered by the application for registration.

4 The grounds put forward in support of that refusal were the lack of distinctiveness of the mark applied for and its descriptive character in regard to the goods and services referred to in paragraph 2 above, within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001).

5 By decision of 10 April 2017, after receiving Ecolab Deutschland’s response to the objections set out in the notification of provisional refusal, the examiner confirmed, in respect of the goods and services referred to in paragraph 2 above and on the same grounds as previously stated, the refusal of protection of the mark at issue in the European Union.

6 On 2 June 2017 Ecolab Deutschland filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).

7 On 16 October 2017, following a transfer of the international registration, the applicant, Ecolab USA, Inc., succeeded Ecolab Deutschland as the proprietor of the mark applied for.

8 By decision of 9 November 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.

9 In the first place, the Board of Appeal considered that the relevant public consisted of average and professional English-speaking consumers in the European Union and that the level of attention of that public would vary from average to high (see paragraphs 14 to 16 of the contested decision).

10 In the second place, the Board of Appeal noted, first, that the sign SOLIDPOWER consisted of a combination of the words ‘solid’ and ‘power’, the respective meanings of which were, inter alia, ‘strong, reliable, firm’ and ‘relating to, or utilising strength’. Therefore, according to the Board of Appeal, the expression ‘solidpower’, taken as a whole, in relation to the goods and services referred to above, could be understood as meaningful given that it communicated the characteristics of those goods and services — namely that they were strong and reliable — to the relevant public. Secondly, it considered that that combination, which was not more than the sum of its parts, which had, moreover, been combined in line with English lexical and syntactic rules, was devoid of any distinctive or fanciful character and that, by contrast, it described the relevant characteristics of the goods and services in question (see paragraphs 19 to 23 of the contested decision). Thirdly, the Board of Appeal took the view that the registrations of the sign SOLIDPOWER by national patent and trade mark offices in third countries were not capable of calling into question the conclusion as to the descriptive character of that sign (see paragraph 25 of the contested decision). The Board of Appeal accordingly refused the application for registration pursuant to Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.

11 In the third place, the Board of Appeal considered that, in so far as the sign at issue would be perceived as descriptive of the characteristics of the goods and services concerned and would not be capable of indicating a commercial origin, it would be regarded by the relevant public simply as an informative statement. The Board of Appeal thus also refused the application for registration pursuant to Article 7(1)(b) of Regulation 2017/1001 (see paragraphs 28 to 33 of the contested decision).

14 In support of its action, the applicant relies on two pleas in law, alleging, in essence, first, infringement of Article 7(1)(c) and (2) of Regulation 2017/1001 and, second, infringement of Article 7(1)(b) and (2) of Regulation 2017/1001.

First plea in law, alleging infringement of Article 7(1)(c) and (2) of Regulation 2017/1001

15 According to the applicant, the Board of Appeal was wrong to conclude that the mark applied for had a sufficiently direct and specific link with the goods and services covered to enable the public concerned immediately to perceive, without further thought, a description of those goods and services or of one of their characteristics.

16 More specifically, first of all, the applicant argues that the Board of Appeal carried out an incorrect analysis of the mark applied for, since it split that mark in order to analyse the two words of which it is composed individually, on the basis of dictionary definitions. Such a split into two adjectives, ‘strong’ and ‘reliable’, does not correspond to the meaning of the expression ‘solidpower’, which is a fanciful and unusual term combining the concepts of ‘solidity’ or ‘denseness’ with the intangible concept of ‘power’ and which is likely to be interpreted, overall, as meaning ‘solid authority’, ‘dense strength’ or ‘solid electricity’, all of which are expressions which do not exist in English.

17 Next, the applicant argues that, even assuming that the relevant public will mentally split that neologism in order to identify words in the mark applied for which are more familiar to it, that mark cannot be regarded as having a descriptive character. The words ‘solid’ and ‘power’ and the expression ‘solidpower’ do not describe the relevant characteristics of the goods and services concerned. First, the applicant emphasises that, as the words ‘solid’ and ‘power’ have several meanings, the relevant public will be required to exert itself mentally in order to first of all split the sign SOLIDPOWER into the words ‘solid’ and ‘power’ and then to come to the meaning of ‘strong and reliable’, assuming such a meaning will be perceived at all. Secondly, it argues that, assuming that the mark applied for were to be understood in that way, it would still not convey, without the need for further thought, an obvious meaning in relation to the goods and services in question, nor would it indicate one of their characteristics. This is all the more the case with regard to the goods and services in Classes 9 and 37.

18 Lastly, the applicant relies on registration decisions made in respect of goods and services identical to the goods and services in question by national patent and trade mark offices in a number of English-speaking countries which are not EU Member States. In its view, the Board of Appeal should have taken those earlier registrations into account when deciding whether there was an absolute ground for refusal concerning those goods and services, given its assertion that the sign was descriptive and lacked distinctive character for the English-speaking public, on the ground that those registrations provided a clear indication of the perception of that mark by native English speakers.

20 Article 7(1)(c) of Regulation 2017/1001 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. In addition, Article 7(2) of Regulation 2017/1001 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.

21 According to case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, which consists in ensuring that signs that are descriptive of one or more of the characteristics of the goods or services in respect of which registration is sought may be freely used by all economic operators offering such goods or services (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 37 and the case-law cited).

22 In that regard, it should be borne in mind that, by using, in Article 7(1)(c) of Regulation 2017/1001, the terms ‘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’, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, second, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 49).

23 The fact that the EU legislature chose to use the term ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50). Consequently, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 22 and the case-law cited).

24 Moreover, signs which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation 2017/1001, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 21 September 2017, InvoiceAuction B2B v EUIPO (INVOICE AUCTION), T‑789/16, not published, EU:T:2017:638, paragraph 30).

25 Consequently, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of those goods or services or of one of their characteristics (see judgment of 14 June 2017, LG Electronics v EUIPO (Second Display), T‑659/16, not published, EU:T:2017:387, paragraph 19 and the case-law cited). 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, second, by reference to the goods or services concerned (see judgment of 9 March 2017, Maximum Play v EUIPO (MAXPLAY), T‑400/16, not published, EU:T:2017:152, paragraph 20 and the case-law cited).

26 Lastly, it should be borne in mind that, for a trade mark which consists of a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001, it is not sufficient that each of its components may be found to be descriptive. The word itself must also be found to be so. However, a trade mark consisting of 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 that provision, unless there is a perceptible difference between the word and the mere sum of its parts. This assumes that, because of the unusual nature of the combination in relation to the goods or services, the word produced by a combination of elements creates an impression which is 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 that word is more than the sum of its parts. In that regard, the analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see, to that effect, judgments of 25 February 2010, Lancôme v OHIM, C‑408/08 P, EU:C:2010:92, paragraphs 61 and 62 and the case-law cited, and of 30 September 2015, Ecolab USA v OHIM (GREASECUTTER), T‑610/13, not published, EU:T:2015:737, paragraph 20).

27 It is in the light of those considerations that the applicant’s argument that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 by considering that the mark applied for had a descriptive character must be examined.

28 In the first place, regarding the relevant public, it should be noted that, in paragraph 14 of the contested decision, the Board of Appeal considered that, in view of the goods and services covered by the mark applied for, the relevant public consisted of both average consumers and professionals and that the level of attention of that public would vary from average to high. As the mark applied for consisted of elements derived from English, the Board of Appeal stated, in paragraph 16 of the contested decision, that it was necessary to carry out the assessment of its descriptive character for the purpose of Article 7(1)(c) and (2) of Regulation 2017/1001 having regard to the English-speaking public of the European Union. In so far as it is necessary to understand the ‘average consumers’ referred to by the Board of Appeal as meaning the general public, as EUIPO confirmed at the hearing in response to a question put by the Court, those findings, which, moreover, are not contested by the applicant, are correct and must consequently be maintained.

29 In the second place, for the purposes of the application of Article 7(1)(c) of Regulation 2017/1001, it is necessary to examine, on the basis of a given meaning of the word sign in question, whether, from the point of view of the relevant public or, at the very least, a non-negligible part of that public, there is a sufficiently direct and specific relationship between the sign applied for and the goods and services in respect of which registration is sought for the purposes of the case-law recalled in paragraph 25 above.

30 As a preliminary point, it should be noted that, relying on established case-law, the Board of Appeal correctly recalled, in paragraphs 17 and 18 of the contested decision, that, in the case of compound word signs, such as the sign at issue in the present case, it was necessary to take into consideration the overall impression given by the mark, without this meaning that an examination might not first be made of each of the various components of that mark. Indeed, in the course of the overall assessment of the mark, it may be useful to examine each of the components of the mark concerned (see, to that effect, judgment of 18 May 2017, Sabre GLBL v EUIPO (INSTASITE), T‑375/16, not published, EU:T:2017:348, paragraph 40).

31 Accordingly, regarding verbal expressions which consist of a combination of elements, the descriptive character of a mark may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 23 and the case-law cited).

32 In the present case, it should be noted that, contrary to the applicant’s assertions, the word sign SOLIDPOWER does not consist of a unitary term which cannot be split into two words because it is a neologism, as the applicant emphasised in its written pleadings, or simply an invented word devoid of any meaning whatsoever, as it claimed at the hearing. Indeed, it consists in the simple juxtaposition of two elements, ‘solid’ and ‘power’, which are easily and immediately recognisable. Furthermore, it should also be noted that the expression ‘solidpower’, as the Board of Appeal correctly stated in paragraph 23 of the contested decision, complies with English lexical and grammatical rules and there is nothing unusual in its syntax that would enable it to be regarded as more than a simple combination of those words. Therefore, the Board of Appeal did not make an error of assessment when, like the examiner and in accordance with the case-law recalled in paragraph 31 above, it took into consideration, in paragraph 19 of the contested decision, those elements and their respective meanings before assessing the overall impression given by the sign SOLIDPOWER, in order to establish whether that sign was more than the sum of its parts.

33 Regarding the meaning of the mark applied for, it must be pointed out that, in paragraph 19 of the contested decision, the Board of Appeal, making reference to English dictionaries, indicated, first, that the word ‘solid’ meant, inter alia, ‘strong, reliable, firm’ and, second, that the word ‘power’ meant, inter alia, ‘relating to or utilising strength’.

34 On the basis of those definitions, which, moreover, are not disputed by the applicant, the Board of Appeal considered that the expression ‘solidpower’, assessed globally, having regard to the goods and services concerned, would be understood by the relevant public as being a combination of two descriptive elements, with a meaning not going beyond the meaning of those elements when viewed separately, and as informing it, without the need for further reflection, of the characteristics of the goods and services covered, namely that they were strong and reliable. The fact that that expression is a combination of an adjective and a noun, or an adjective and a verb, as was argued by the applicant in the application and at the hearing, respectively, is of little importance. Indeed, whatever the grammatical nature of the elements ‘solid’ and ‘power’, the relevant public will easily perceive the expression ‘solidpower’ as being a combination of two descriptive elements, the meaning of which does not go beyond the meaning of its constituent elements when viewed separately.

35 In that regard, it is also necessary to reject the argument that the mark applied for has a ‘vague and allusive’ meaning which gives it a fanciful character as unfounded. As has been stated in paragraphs 33 and 34 above, the expression ‘solidpower’ has a clear meaning for the relevant public.

36 Accordingly, the applicant is incorrect in its assertion that the Board of Appeal carried out a separate examination of each of the elements of the mark in question without assessing the overall impression given by it.

37 Furthermore, the applicant adds that, assuming that the relevant public will split the mark applied for into two word elements, the Board of Appeal could not have regarded it as having a descriptive character given that, first, the terms ‘solid’ and ‘power’ and the word ‘solidpower’ have several meanings and, second, those terms do not describe the essential characteristics of the goods and services in question. In that regard, it should be noted, first, that it is sufficient, for the sign to be regarded as descriptive, that at least one of its potential meanings designates one of the characteristics of the goods and services concerned (see, to that effect, judgment of 16 April 2015, Drogenhilfe Köln Projekt v OHIM (Rauschbrille), T‑319/14, not published, EU:T:2015:208, paragraph 20).

38 Secondly, it should be noted that the applicant’s argument fails to take into consideration the key principle, recalled in paragraph 25 above, that the possible descriptive character of a mark must be assessed having regard to the perception of the relevant public, on the one hand, and the goods and services covered by the application for registration, on the other.

39 It follows from the meaning of the sign applied for (see paragraphs 31 to 33 above) and the nature of the cleaning products, in particular for warewashing, in Classes 1, 3 and 5 covered by the sign applied for, that the expression ‘solidpower’ describes, as is correctly emphasised by EUIPO, one of the characteristics that an average consumer could expect of those goods, namely that they are reliable by nature and their performance is strong and solid.

40 The same is true so far as the goods in Class 9, namely the measuring and dosing apparatus and accompanying computer software, which are, inter alia, accessories for dishwashing apparatus, are concerned, in respect of which the Board of Appeal correctly noted, in paragraph 21 of the contested decision, that they could be used for the measurement and dosing of strong and reliable detergents, cleaning products and chemicals. In that regard, it is necessary to reject the applicant’s vague and unsubstantiated assertion that the Board of Appeal’s interpretation is too broad. In so far as those goods must be regarded, inter alia, as parts of warewashing machines and dishwashers, which is not disputed by the applicant, and thus as intended to be used for the measurement and dosing of, in particular, those cleaning products, there is a sufficiently close link between the goods in Class 9 and those in Classes 1, 3 and 5 to enable the Board of Appeal to regard the mark applied for as also being descriptive of the goods in Class 9 concerned.

41 Lastly, regarding the installation, repair and maintenance of warewashing apparatus and their control-systems services in Class 37, the Board of Appeal also did not make an error of assessment in noting, in essence, again in paragraph 21 of the contested decision, that they were ancillary and closely linked to strong and reliable warewashing apparatus, which permitted a finding, in view of their purpose, that the mark applied for also had a descriptive character in respect of those services. In that regard, the applicant’s assertion that the sign applied for provides no information regarding those services must be rejected. If, as is emphasised by EUIPO, the mark applied for conveys clear information with regard to warewashing machines, dishwashers and control-systems indicating that they are strong and reliable, the same is true so far as the installation, repair and maintenance services for those apparatus are concerned, which will be perceived by the relevant public as ancillary services closely linked to those apparatus.

42 In any event, it should be noted, as EUIPO did, that it is clear from the list of goods in Class 9 and services in Class 37 covered by the application for registration that one of their possible characteristics, which is also an indication of the quality of their performance, is that they are strong and reliable. Accordingly, even assuming that there is no link between the goods in Class 9 and the services in Class 37, on the one hand, and the other goods covered by the application for registration, on the other, the fact remains that the expression ‘solidpower’ describes one of their characteristics.

43 The Board of Appeal was therefore correct to consider, in paragraph 22 of the contested decision, that the expression ‘solidpower’ was capable of describing the relevant characteristics — namely that they were strong and reliable — of the goods and services covered by the application for registration and that the relevant public would not have to carry out any particular analysis in order to grasp the descriptive character of the sign applied for, with the result that, contrary to the applicant’s assertions, it would not have to try and ascribe a remote and illogical meaning to the term ‘solidpower’. Moreover, it should be observed, as EUIPO did, that the combination ‘solidpower’ contains specific and precise information regarding the characteristics of the goods and services covered by the trade mark application, given that these are expected characteristics of those goods and services which are directly related to their performance and quality. Furthermore, inasmuch as they indicate qualitative performance and are, thus likely to determine the choice of the consumer, those characteristics are, contrary to the applicant’s assertions, essential. In that regard, it must also be borne in mind that, in any event, according to settled case-law, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description by the sign in question are commercially essential or merely ancillary (see judgment of 12 June 2012, Stichting Regionaal Opleidingencentrum van Amsterdam v OHIM — Investimust (COLLEGE), T‑165/11, not published, EU:T:2012:284, paragraph 17 and the case-law cited).

44 Having regard to those considerations, the applicant’s argument that the expression ‘solidpower’ is not descriptive because it does not provide the relevant public with clear information either in relation to the goods and services concerned or in relation to their characteristics must be rejected.

45 In that regard, so far as the applicant’s argument based on the judgments of 9 October 2002, Dart Industries v OHIM (UltraPlus) (T‑360/00, EU:T:2002:244); of 2 December 2008, Ford Motor v OHIM (FUN) (T‑67/07, EU:T:2008:542); and of 12 May 2016, Chung-Yuan Chang v EUIPO — BSH Hausgeräte (AROMA) (T‑749/14, not published, EU:T:2016:286) is concerned, it is sufficient to note that, in those judgments, the General Court found, in essence, that the marks applied for were suggestive because the link between the meaning of the signs in respect of which registration was sought, on the one hand, and the goods in question, on the other, was too vague, uncertain and subjective to confer descriptive character on those signs in relation to those goods. By contrast, in the present case, as has been explained in paragraphs 39 to 42 above, there is a sufficiently close link between the term ‘solidpower’ and the goods and services covered.

46 Lastly, regarding the applicant’s argument that the Board of Appeal should have taken account of the registrations by the national patent and trade mark offices of the United States, Australia and New Zealand, in so far as those registrations are relevant for assessing the registrability of the mark applied for in countries speaking the same language as that on which EUIPO based its objections, it is sufficient to note that those registrations, in accordance with the rules applicable in those third countries, do not enable it to be established that, in the present case, the Board of Appeal erred in its application of Article 7(1)(c) of Regulation 2017/1001.

47 First, the provisions that appear under Chapter XIII of Regulation 2017/1001 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 6 June 2018, Apcoa Parking Holdings v EUIPO, C‑32/17 P, not published, EU:C:2018:396, paragraph 31 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 sign in question originated (see judgments of 30 September 2015, GREASECUTTER, T‑610/13, not published, EU:T:2015:737, paragraph 41 and the case-law cited, and of 13 July 2017, Ecolab USA v EUIPO (ECOLAB), T‑150/16, not published, EU:T:2017:490, paragraph 43 and the case-law cited).

48 Moreover, that conclusion cannot be called in question by the applicant’s argument that the judgment of 12 February 2004, Henkel (C‑218/01, EU:C:2004:88), and the order of 12 February 2009, Bild digital and ZVS (C‑39/08 and C‑43/08, not published, EU:C:2009:91), confirm that the earlier registrations in other Member States are relevant in the context of the assessment of the mark applied for, because they enable it to be established that the mark serves as an indication of origin of the goods and services covered by the application for registration. Indeed, contrary to the applicant’s assertions, while emphasising the autonomous nature of the EU trade mark regime, the Court confined itself to stating, in the specific context of the interpretation 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), that, although the competent authority of one Member State might take into consideration the earlier registration of an identical trade mark for identical goods or services in another Member State, that earlier registration cannot, however, be decisive as regards that national authority’s decision to grant or refuse registration of the mark applied for (judgment of 12 February 2004, Henkel, C‑218/01, EU:C:2004:88, paragraph 63; see also order of 12 February 2009, Bild digital and ZVS, C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraph 15 and the case-law cited).

49 It follows from all those considerations that the first plea in law must be rejected.

Second plea in law, alleging infringement of Article 7(1)(b) and (2) of Regulation 2017/1001

50 In its second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, the applicant argues, in essence, that the mark applied for is sufficiently distinctive inasmuch as, first, it is not descriptive of the goods and services in question, given that it is a neologism which describes neither the goods and services in question nor their characteristics and, second, it serves as an indication of origin in the mind of the public, as shown by an internet search.

52 In that regard, it should be borne in mind that, as is apparent from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign in question to be ineligible for registration as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27; see also judgment of 21 September 2017, INVOICE AUCTION, T‑789/16, not published, EU:T:2017:638, paragraph 49 and the case-law cited).

53 In the present case, since the mark applied for has been held to be descriptive of the goods and services in question, and cannot, consequently, be registered as an EU trade mark, failing on the ground for refusal provided for in Article 7(1)(c) of Regulation 2017/1001, it is unnecessary to examine the second plea in law, alleging infringement of Article 7(1)(b) and (2) of that regulation.

54 It follows from all of the foregoing that the action must be dismissed in its entirety.

55 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.

56 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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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Ecolab USA v EUIPO (SOLIDPOWER) (EU trade mark - Judgment) [2019] EUECJ T-40/18 (17 January 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T4018.html Cite as: ECLI:EU:T:2019:18, [2019] EUECJ T-40/18, EU:T:2019:18

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