Nestle v OHIM (NOURISHING PERSONAL HEALTH) (Judgment) [2015] EUECJ T-336/14 (08 October 2015)

Judgment Background to the dispute On 22 November 2011, the applicant, Société des produits Nestlé SA, sought, at the International Bureau of the World Intellectual Property Organisation (WIPO), the international registration designating the European Community of the word mark NOURISHING PERSONAL HEALTH. That international registration was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The goods and services in respect of which the protection of the mark applied for was claimed are in Classes 5, 10, 41, 42 and 44 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 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical use; diagnostic preparations for medical use; dietetic substances and foodstuffs for clinical and medical use; formula milk, food and food substances for babies; food and food substances for medical use for children and the sick; food and food substances for pregnant women and nursing mothers for medical use; nutritional and dietetic supplements for medical use; vitamin preparations, preparations made with minerals; dietetic confectionery for medical use’; – Class 10: ‘Diagnostic apparatus for medical use; surgical and medical apparatus and instruments, probes, pumps for enteral feeding’; – Class 41: ‘Personnel training, organization of cultural or educational courses, seminars, conferences, exhibitions; publishing and editing of books, pamphlets, newspapers, films and recordings; education on nutrition, all educational services relating to nutrition and food, particularly the transmission of information and suggestions relating to food, nutrition and diet’; – Class 42: ‘Scientific research and development relating to food, diet and weight loss’; – Class 44: ‘Consulting in connection with health, food and nutrition; medical services and providing information in the field of medicine; diagnostic services for medical use; consulting on diet and food in general; planning and monitoring of weight loss programs; information on consulting and advice in relation to medicine, psychology and to modifying nutritional behaviour and physical exercise; health clinics; nursing and medical care services; sanatoriums; rest homes; clinics’. By decision of 28 November 2012, the examiner refused registration of the mark applied for in respect of all the goods and services referred to, on the basis of Article 7(1)(b) and (2) of Regulation No 207/2009. On 22 January 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against that decision. By decision of 12 March 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It found that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 on the ground that, beyond its promotional meaning, that mark did not include any element which would enable the relevant public to perceive it as an indication of the commercial origin of the goods and services covered by the mark. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant puts forward three pleas in law, alleging: (i) infringement of Article 76(1) of Regulation No 207/2009; (ii) infringement of Article 75 of Regulation No 207/2009; and (iii) infringement of Article 7(1)(b) of that regulation. It is appropriate to begin by examining the second plea. The second plea, alleging infringement of Article 75 of Regulation No 207/2009 The applicant claims that the Board of Appeal infringed the obligation to state reasons. According to the case-law, the obligation to state reasons laid down in the first sentence of Article 75 of Regulation No 207/2009 has the same scope as that laid down in the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the reasons for the measure taken so as to enable them to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 15 July 2014 in Łaszkiewicz v OHIM — Cables y Eslingas (PROTEKT) , T‑18/13, EU:T:2014:666 , paragraph 71 and the case-law cited). In the present case, the Board of Appeal stated, first, that the goods and services covered by the mark applied for have the characteristic that they optimise the consumer’s state of health as a result of care, training, consulting and scientific research in relation to nutrition and dietetics (paragraph 17 of the contested decision) and, secondly, that one of the possible translations of the expression ‘nourishing personal health’ into French, the language of the case before the Board of Appeal, was ‘qui nourrit la santé personnelle’ (‘which nourishes personal health’) (paragraph 13 of the contested decision). The Board of Appeal took the view that, as the relevant public consisted of the general public and specialists, its level of attention varied from average to high (paragraph 18 of the contested decision). However, it found that, whatever the level of attention of the relevant public, the mark applied for had no distinctive character. In that regard, it stated that the expression ‘nourishing personal health’ conveyed a simple, banal promotional message extolling the merits of the goods and services at issue and that the relevant public would not, when faced with the mark applied for, be led to perceive in it, beyond the promotional information that the goods and services at issue were aimed at optimising the consumer’s state of health in the field of nutrition, any indication of the commercial origin of those goods and services (paragraph 24 of the contested decision). It follows that the Board of Appeal set out the facts and legal considerations which make it possible to know the reasons which led it, on the basis of Article 7(1)(b) of Regulation No 207/2009, to refuse registration of the mark applied for. The contested decision is therefore sufficiently reasoned. In that regard, the two arguments put forward by the applicant cannot succeed. In the first place, as regards the applicant’s argument that the Board of Appeal did not express a view on the argument which it had put forward before it and which was based on a decision of the Intellectual Property Office (United Kingdom) of 10 April 2013, it must be pointed out that, according to the case-law, the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment in PROTEKT , cited in paragraph 11 above, EU:T:2014:666 , paragraph 73 and the case-law cited). That is a fortiori the case as regards an argument put forward by the applicant which is based on a national decision. It is apparent from settled case-law that, since the Community trade mark regime is an autonomous system, OHIM is not bound, even though it may take them into consideration, by decisions given in Member States, in particular by decisions holding that a sign is registrable, even if those decisions have been made in a State belonging to the linguistic area in which the word sign in question originated (see, to that effect, judgment of 25 October 2012 in riha v OHIM — Lidl Stiftung (VITAL&FIT) , T‑552/10, EU:T:2012:576, paragraph 66 and the case-law cited). In the second place, as regards the applicant’s argument that the Board of Appeal did not carry out an assessment of the distinctive character of the mark applied for in respect of each of the goods and services covered by that mark, it must be pointed out that, according to the case-law, although a decision refusing registration of a trade mark must, in principle, state reasons in respect of each of the goods or services at issue, the competent authority may use only general reasoning where the same ground of refusal is given for a category or group of goods or services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 6 December 2013 in Banco Bilbao Vizcaya Argentaria v OHIM (VALORES DE FUTURO) , T‑428/12, EU:T:2013:629, paragraph 49 and the case-law cited). In the present case, since the Board of Appeal took the view, in accordance with that case-law, that all the goods and services at issue had the characteristic that they were aimed at optimising the consumer’s state of health in the field of nutrition and therefore formed a homogeneous group of goods and services, it carried out an overall assessment of the distinctive character of the mark applied for in respect of the whole of that group. The question whether, as the applicant submits, the Board of Appeal erred in finding that all the goods and services at issue had the characteristic that they were aimed at optimising the consumer’s state of health in the field of nutrition goes to the substance of the contested decision and will be examined below in the context of the third plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. It follows that the second plea must be rejected. The first plea, alleging infringement of Article 76(1) of Regulation No 207/2009 The applicant claims that the Board of Appeal infringed its obligation to carry out a stringent and full examination of the facts of its own motion as required by Article 76(1) of Regulation No 207/2009. In the first place, it submits that the Board of Appeal did not take into consideration the fact that the relevant public was the English-speaking public. In the second place, the applicant maintains that the Board of Appeal did not take account of the semantic incorrectness or incoherence of the mark applied for which lies in the fact that that mark does not make sense because ‘one cannot nourish health’. As regards the applicant’s first argument, it must be pointed out that when the Board of Appeal confirms the examiner’s decision in its entirety, that decision, together with its statement of reasons, form part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Courts of the European Union to carry out fully their judicial review as to whether the Board of Appeal’s assessment was well founded (judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart) , T‑304/06, ECR, EU:T:2008:268, paragraph 47). In the present case, the Board of Appeal, by dismissing the appeal, confirmed the examiner’s decision in its entirety. In that decision, the examiner expressly stated that the relevant public was the English-speaking public (paragraph 5 of the contested decision). It was not therefore necessary for the Board of Appeal to repeat it expressly. As regards the applicant’s second argument, it is sufficient to point out that the Board of Appeal found that the mark applied for had an obvious meaning (paragraph 24 of the contested decision), did not constitute a play on words and did not contain any imaginative, surprising or unexpected elements (paragraph 26 of the contested decision). The Board of Appeal therefore examined whether the mark applied for was semantically incorrect or incoherent and found that it was not. It follows that the first plea must be rejected. The third plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009 The applicant criticises the Board of Appeal for finding that the mark applied for is devoid of any distinctive character. Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered. According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as 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 (see judgment of 17 January 2013 in Solar-Fabrik v OHIM (Premium XL and Premium L) , T‑582/11 and T‑583/11, EU:T:2013:24, paragraph 13 and the case-law cited). Registration of a trade 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. However, a mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is only distinctive for the purposes of Article 7(1)(b) of Regulation No 207/2009 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 proprietor of the mark from those of a different commercial origin (see judgment in Premium XL and Premium L , cited in paragraph 28 above, EU:T:2013:24, paragraph 14 and the case-law cited). The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark has been applied for and, secondly, by reference to the perception of the relevant public, which consists of average consumers of those goods or services (see judgment in Premium XL and Premium L , cited in paragraph 28 above, EU:T:2013:24, paragraph 16 and the case-law cited). It must be borne in mind that the mark applied for consists of the expression ‘nourishing personal health’ and that the relevant public consists of the English-speaking general public and English-speaking specialists whose level of attention varies from average to high. It is common ground that the following goods and services at issue are aimed at optimising the consumer’s state of health in the field of nutrition: the dietetic substances and foodstuffs, food and food substances, nutritional and dietetic supplements, preparations and dietetic confectionery in Class 5; the pumps for feeding in Class 10; the services of personnel training, organisation of courses, seminars or conferences and education on nutrition in Class 41; all the services in Class 42; and, lastly, all the services connected with health, food, nutrition and fitness in Class 44. The other goods and services at issue may also be aimed at optimising the consumer’s state of health in the field of nutrition, contrary to what the applicant maintains. First, the pharmaceutical preparations and veterinary preparations in Class 5 include goods which are aimed at optimising the state of health of consumers and of their animals in the field of nutrition. Secondly, the sanitary preparations for medical use and the diagnostic preparations for medical use in Class 5 may be used in medical or surgical interventions aimed at optimising the consumer’s state of health in the field of nutrition. The fact that they are not goods which are assimilated by the human body is not relevant. Thirdly, the diagnostic apparatus for medical use, the surgical and medical apparatus and instruments and the probes in Class 10 may also be used in medical or surgical interventions aimed at optimising the consumer’s state of health in the field of nutrition. Fourthly, the services of organisation of cultural or educational exhibitions and of publishing and editing of books, pamphlets, newspapers, films and recordings in Class 41 and the medical services and services of providing information in the field of medicine; diagnostic services for medical use; information on consulting and advice in relation to medicine, psychology; nursing and medical care services; sanatoriums; rest homes; and health clinics in Class 44 include services which are aimed at optimising the consumer’s state of health in the field of nutrition, which the applicant itself admits. Furthermore, as the question of the optimisation of health in the field of nutrition is widely discussed in the media and problems of nutrition are common problems which affect health, it must be held that services which are aimed at optimising the consumer’s state of health in the field of nutrition do not, contrary to what the applicant maintains, constitute a negligible part of the abovementioned services in Classes 41 and 44. Given that, first, the expression ‘nourishing personal health’, which consists of three common English words the combination of which is in conformity with the rules of English grammar, has a clear, positive meaning, namely ‘which nourishes personal health’, and that, secondly, the goods and services at issue may all be aimed at optimising the consumer’s state of health in the field of nutrition, it must be held that that expression, in connection with the goods and services at issue, will immediately be perceived by the relevant public as conveying the message, which is clear, easily perceptible and does not require any interpretative effort, that those goods and services are aimed at optimising the consumer’s state of health in the field of nutrition. It will therefore be perceived immediately as a promotional message. Furthermore, the applicant errs in claiming, on the basis of the judgment of 21 January 2010 in Audi v OHIM , C‑398/08 P, ECR, EU:C:2010:29 , paragraphs 44 and 45, that the mark applied for will be perceived, beyond its promotional function, as an indication of the commercial origin of the goods or services in question on account of its semantic incorrectness or incoherence, which gives it a certain originality and resonance. The use of the verb ‘to nourish’ together with the expression ‘personal health’ is in no way incoherent or original given that the verb ‘to nourish’, as the applicant maintained before the Board of Appeal, may, inter alia, mean ‘to provide the substances or food necessary for a person’s growth and health so that he is in good physical condition’ or ‘to encourage development; guarantee personal health’. Rather, the use of that verb reinforces the promotional message conveyed by the mark applied for. Consequently, the Board of Appeal was right to find that the mark applied for conveyed a simple, banal promotional message extolling the merits of the goods and services at issue and would not be perceived as an indication of the commercial origin of those goods and services. Furthermore, the applicant errs in claiming that, as the mark applied for has a number of meanings, there is no clear link between that mark and the goods and services covered by that mark. It must be borne in mind that, in view of the goods and services at issue, the Board of Appeal rightly found that the mark applied for will be perceived immediately by the relevant public as a promotional message and not as an indication of the commercial origin of those goods and services, which is sufficient to preclude that mark from having distinctive character, in accordance with the case-law cited in paragraph 29 above. It follows that the third plea must be rejected and, consequently, the action must be dismissed in its entirety. 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. Since 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 GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Société des produits Nestlé SA to pay the costs. Van der Woude Wiszniewska-Białecka Ulloa Rubio Delivered in open court in Luxembourg on 8 October 2015. [Signatures] * 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. 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