Daimler Truck v EUIPO (TRUCKS YOU CAN TRUST) (EU trade mark - Judgment) [2024] EUECJ T-1167/23 (23 October 2024)

Judgment By its action under Article 263 TFEU, the applicant, Daimler Truck AG, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 September 2023 (Case R 485/2023-2) (‘the contested decision’). Background to the dispute On 3 August 2022, the applicant designated the European Union in its international registration of the word sign TRUCKS YOU CAN TRUST. The mark applied for covered goods and services in Classes 12, 14, 16, 18, 25, 28, 36, 37 and 41 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. By decision of 1 March 2023, the examiner partially refused, in so far as the mark applied for covered all or some of the goods and services in Classes 12, 28 and 37, the application for protection of the international registration, on the basis of Article 7(1)(b) of 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), read in conjunction with Article 7(2) of that regulation. Thus, the application for registration was rejected in respect of the following goods and services: - Class 12: ‘Motor vehicles and parts thereof (included in this class), accessories for motor vehicles (included in this class)’; - Class 28: ‘Games and playthings; Model vehicles’; - Class 37: ‘Repair and maintenance of motor vehicles’. On 3 March 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision, in so far as protection was refused for the goods and services referred to in paragraph 4 above (‘the goods and services in question’). By the contested decision, the Board of Appeal dismissed the appeal on the ground that, for the goods and services in question, the mark applied for would be understood as a mere promotional slogan devoid of any distinctive character for the English-speaking public of the European Union, consisting of both the public at large and the professional public. It found that the words in the mark applied for would be understood by the relevant public in their literal sense and that that mark would be perceived as a mere promotional and motivational value statement, indicating to consumers that the goods and services in question concerned particularly reliable and trustworthy trucks. The Board of Appeal also stated that no particular mental effort was required on the part of the relevant public. Consequently, it concluded that the mark applied for was devoid of inherent distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 in respect of the goods and services in question. Forms of order sought The applicant claims that the Court should: - annul the contested decision and order EUIPO to grant protection to the designation of the European Union of the international registration; - order EUIPO to pay the costs. EUIPO contends that the Court should: - dismiss the action; - order the applicant to pay the costs in the event that an oral hearing is convened. Law The jurisdiction of the General Court As regards the second part of the applicant’s first head of claim, it should be observed that the applicant requests that the Court order EUIPO to grant protection to the designation of the European Union of the international registration. In that regard, it is sufficient to recall that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see, to that effect, order of 26 October 1995, Pevasa and Inpesca v Commission , C-199/94 P and C-200/94 P, EU:C:1995:360 , paragraph 24 and the case-law cited, and judgment of 25 September 2018, Sweden v Commission , T-260/16, EU:T:2018:597 , paragraph 104 and the case-law cited). It follows that the second part of the applicant’s first head of claim must be rejected on the ground of lack of jurisdiction. Substance The applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. It complains that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character. EUIPO disputes the applicant’s arguments. Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 21 January 2010, Audi v OHIM , C-398/08 P, EU:C:2010:29 , paragraph 33 and the case-law cited). The distinctive character of a mark must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM , C-456/01 P and C-457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited). Signs that are devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, are those which are incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquires the goods or services 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 (see judgment of 17 January 2017, Netguru v EUIPO (NETGURU) , T-54/16, not published, EU:T:2017:9 , paragraph 45 and the case-law cited). The mere fact that a mark is perceived by the relevant public as a promotional formula is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character. A mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (order of 12 June 2014, Delphi Technologies v OHIM , C-448/13 P, not published, EU:C:2014:1746, paragraph 36, and judgment of 24 November 2015, Intervog v OHIM (meet me) , T-190/15, not published, EU:T:2015:874 , paragraph 20). In so far as that public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood - perhaps even primarily understood - as a promotional formula has no bearing on its distinctive character (see, to that effect, judgments of 21 January 2010, Audi v OHIM , C-398/08 P, EU:C:2010:29 , paragraph 45, and of 12 July 2012, Smart Technologies v OHIM , C-311/11 P, EU:C:2012:460 , paragraph 30). As regards the assessment of the distinctive character of marks consisting of an advertising slogan, it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (see judgment of 21 January 2010, Audi v OHIM , C-398/08 P, EU:C:2010:29 , paragraph 36 and the case-law cited). Thus, a minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 inapplicable (see judgment of 6 October 2021, Kondyterska korporatsiia ‘Roshen’ v EUIPO - Krasnyj Octyabr (Representation of a lobster) , T-254/20, not published, EU:T:2021:650, paragraph 116 and the case-law cited). It is also apparent from the case-law that, although all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (judgments of 21 January 2010, Audi v OHIM , C-398/08 P, EU:C:2010:29 , paragraphs 56 and 57, and of 22 March 2017, Hoffmann v EUIPO (Genius) , T-425/16, not published, EU:T:2017:199 , paragraph 28). It is in the light of those principles that the present case falls to be considered. In the first place, as regards the relevant public, it should be noted that the Board of Appeal found that the relevant public consisted of the public at large and the professional public. The Board of Appeal also stated that it was necessary to take into account the English-speaking public, as the mark applied for was composed of English words. Those findings of the Board of Appeal are not disputed by the applicant. In the second place, as regards the assessment of the distinctive character of the mark applied for, the Board of Appeal found that the English basic words ‘trucks you can trust’ would be understood by the English-speaking public in their literal sense, namely the word ‘trucks’ as referring to ‘a large vehicle that is used for the transport of goods by road’, the word ‘you’ as meaning ‘the person or people that one is talking or writing to’, the word ‘can’ as referring to ‘the ability or opportunity of someone to do something’ and the word ‘trust’ as meaning ‘to place confidence in (someone to do something)’ or to ‘have faith (in); rely (upon)’. That assessment by the Board of Appeal is not disputed by the applicant. In the third place, according to the Board of Appeal, the fact that the sign applied for can be memorised easily and that it is succinct does not automatically endow it with distinctive character. The Board of Appeal found that the term ‘trust’ applied to both goods and services. It stated that, for the goods and services in question, the mark applied for conveyed purely promotional information, namely that the goods in question in Class 12 concerned particularly reliable and trustworthy trucks, the goods in question in Class 28 depicted and represented such trucks and the services in question in Class 37 could make a truck particularly reliable and trustworthy. The combination of words ‘trucks you can trust’, which did not contain any surprising, ambiguous or unexpected element and did not require any analysis or any particular mental exertion in order to be understood, would immediately be perceived by the relevant public as a promotional slogan intended to persuade, inspire or encourage it to purchase the goods and services in question since they are particularly reliable and trustworthy. Consequently, it concluded that the mark applied for was devoid of any inherent distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 in respect of the goods and services in question. The applicant disputes that assessment. It submits that the Board of Appeal was correct not to take the view that the mark applied for was directly descriptive. According to the Board of Appeal, the expression ‘trucks you can trust’ initially refers to goods, namely trucks, and not to services. However, the applicant asserts that the use of the word ‘trust’ is meaningless when it relates to goods, since it denotes an emotional connection to another person. In the applicant’s view, the Board of Appeal disagrees with that interpretation, but does not justify its different view. Furthermore, the applicant submits that the mark applied for also protects services that are conceptually even further removed from persons. For those reasons, the applicant submits that a ‘double transfer of meaning’, and therefore an interpretative effort, must be made by the relevant public, which makes that mark memorable and thus distinctive. Furthermore, the applicant also submits that the fact that the mark applied for begins with the word ‘trucks’ and ends with the word ‘trust’, which are words which have a similar typeface and phonetic similarities, gives the sequence of words of that mark a concise character, making it particularly memorable. First, the Board of Appeal correctly noted that the verb ‘trust’ was applicable to both goods and services, as is apparent from the digital version of the Cambridge Dictionary . The applicant does not state, in the application, which element contained in Annex BRP 9 thereof would be capable of calling that finding into question. Furthermore, assuming that the applicant seeks to allege an inadequate statement of reasons in the contested decision, it is sufficient to note that paragraph 29 of that decision makes it possible to understand the reason why the Board of Appeal took the view that that verb could also concern trucks. Furthermore, the fact, relied on by the applicant, that the words ‘trucks’ and ‘trust’ have a similar typeface and phonetic similarities is not sufficient, in itself, for the view to be taken that the expression ‘trucks you can trust’ is unusual in the light of the rules of English syntax, grammar, phonetics or semantics. Thus, that expression conveys a simple, clear and unequivocal message to the relevant public, which is not likely to confer any particular originality or resonance, to require at least some interpretation or to set off a cognitive process. Second, it is common ground between the parties that the goods and services in question concern trucks, that they represent trucks or that they enable them to be repaired and maintained. In those circumstances, it must be found, as did the Board of Appeal, that the mark applied for conveys purely promotional information, in so far as it indicates that those goods and services concern particularly reliable and trustworthy trucks, that they depict and represent such trucks or that they can make those trucks particularly reliable and trustworthy. The mark applied for, consisting of the combination of words ‘trucks you can trust’, does not have any surprising, ambiguous or unexpected element and will be directly understood by the relevant English-speaking public, be it in relation to trucks as such or to the other goods and services in question. Therefore, it must be concluded that the expression ‘trucks you can trust’ will be perceived by the relevant public as a mere promotional slogan and not as an indication of the commercial origin of the goods and services in question. Consequently, it must be held that the Board of Appeal correctly concluded that, for the goods and services in question, the mark applied for was not distinctive within the meaning of Article 7(1)(b) of Regulation 2017/1001. It follows that the single plea must be rejected as unfounded and, consequently, the action must be dismissed. Costs 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. Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Daimler Truck AG to bear its own costs; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. Kowalik-Bańczyk Hesse Ricziová Delivered in open court in Luxembourg on 23 October 2024. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII