Colgate-Palmolive v EUIPO (360°) (Intellectual, industrial and commercial property - Trade marks : Judgment) [2017] EUECJ T-333/16 (07 December 2017)

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(EU trade mark — Application for the EU figurative mark 360° — Absolute grounds for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) — Distinctive character acquired through use — Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001))

Colgate-Palmolive Co., established in New York, New York (United States), represented by M. Zintler and A. Stolz, lawyers,

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 April 2016 (Case R 2287/2015-4), concerning an application for registration of the figurative sign 360° as an EU trade mark,

having regard to the response lodged at the Court Registry on 12 September 2016,

1 On 8 May 2015, the applicant, Colgate-Palmolive Co., filed an application for registration of an EU trade mark with 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) (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).

3 The goods in respect of which registration was sought are in Class 21 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 to the following description: ‘Toothbrushes’.

4 By decision of 16 September 2015, the examiner rejected the application for registration of the EU trade mark on the grounds set out in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).

5 On 16 November 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.

6 By decision of 14 April 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It found, in essence, that the sign applied for was devoid of any distinctive character and was descriptive for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009 and that acquired distinctiveness pursuant to Article 7(3) of that regulation had not been proved. In the first place, as regards the relevant public, it found that the goods in question were toothbrushes aimed at the average consumer in the European Union.In the second place, as regards Article 7(1)(c) of Regulation No 207/2009, it stated first that the sign applied for consisted of the number 360 followed by a ‘°’ symbol, which were written in bold lettering against a black, elliptical background circled by a black line. Second, it found that the word element ‘360°’ would be understood as referring to the mathematical concept of 360° in the sense of ‘all round’ and, consequently, to a toothbrush that allows more profound brushing. Lastly, it found that the figurative elements only reinforced the meaning of the element ‘360°’, as the elliptical shape and the ‘black and white swoosh’ fully enclosed that element and illustrated the concept of ‘all-around’ cleaning, namely brushing and cleaning of the tooth from all sides. It deduced from that that, whether considered on their own or collectively, the figurative elements were not capable of distracting consumers from the descriptive nature of the element ‘360°’.It therefore found that the link between the sign and the designated toothbrushes was sufficiently close for the sign to fall within the scope of the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009. In the third place, as regards Article 7(1)(b) of that regulation, it found that, for a sign to be ineligible for registration as an EU trade mark, it was sufficient for one of the absolute grounds for refusal listed to apply, and that a descriptive word mark necessarily lacked distinctive character. In addition, it dismissed the applicant’s references to national registrations and to the registration under the number 12966909 of the word sign 360° as an EU trade mark in respect of the goods ‘toothpaste and mouthwash’ in Class 3. In the fourth and last place, as far as Article 7(3) of that regulation was concerned, the Board of Appeal found that the applicant had not provided evidence that the sign applied for had acquired distinctive character through use in relation to each of the Member States in the European Union. It stated that sales figures alone were not sufficient for that purpose. In addition, it took the view that the applicant had not proved that consumers perceived the sign ‘360°’ on its own as an indication of commercial origin. It pointed out that, in, inter alia, advertisements, that sign never appeared on its own, but always in combination with the applicant’s trade name, Colgate, and other descriptive elements such as ‘Surround’, ‘DeepClean’ or ‘ActiFlex’. The Board of Appeal took the view that the fact that that sign was used together with other descriptive elements suggested that consumers would understand it as a technical specification within the product range of Colgate toothbrushes.

9 In support of the action, the applicant relies on four pleas in law alleging infringement, respectively, first, of Article 7(1)(c) of Regulation No 207/2009, second, of Article 7(1)(b) of that regulation, third, of the principles of equal treatment and sound administration and, fourth, of Article 7(3) of that regulation.

10 EUIPO claims that the documents included in Annexes A 5 to A 7 to the application are inadmissible on the ground that these documents were submitted for the first time before the Court. Those annexes contain extracts from the Global New Products Database which relate to some of the applicant’s toothbrushes in the European Union in the periods from 2004 to 2009, from 2010 to 2015 and, lastly, in 2016.

11 The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009. It is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded as inadmissible and there is no need to assess their probative value (see, to that effect, judgments of 6 March 2003, DaimlerChrysler v OHIM (Grille), T‑128/01, EU:T:2003:62, paragraph 18; of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19; and of 14 May 2013, Masottina v OHIM — Bodegas Cooperativas de Alicante (CA’ MARINA), T‑393/11, not published, EU:T:2013:241, paragraph 12).

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

12 By its first plea, the applicant criticises the Board of Appeal for having found that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009. In that context, it puts forward three claims. By its first claim, the applicant alleges that the sign applied for is clearly ambiguous in that, in addition to the mathematical concept of 360° in the sense of ‘all round’, it could have other meanings that are unconnected with toothbrushes or oral care products such as, for example, a temperature of 360° (Fahrenheit or Celsius), at which it would be impossible to use a toothbrush as it would melt or would severely burn the mouth, a description of a task that has been completed or the four-digit number 3600. In addition, it maintains that even the mathematical concept of 360° lends itself to interpretations other than ‘all round’, such as ‘to rotate on its own axis relating to a 360 degree view’, a movement that is irrelevant with regard to the intended use of the goods in question. Furthermore, the applicant submits that the Board of Appeal almost entirely disregarded the individually designed figurative elements, which make the sign applied for one that is not descriptive. By its second claim, the applicant maintains that the sign applied for is not descriptive because it consists of abstract and arbitrary numbers without any relation to oral care products. By its third claim, the applicant contends that there is no link between the term ‘360°’ and the goods in question which would allow the relevant consumers to recognise, without any further intellectual effort, a characteristic of those goods. It submits that it would be physically impossible to reach a tooth from all its sides and that, in addition, interdental toothbrushes do not make it possible to go all around a tooth, but only to enter the interdental space from one side. In conclusion, the applicant criticises the Board of Appeal for failing to take into consideration the numerous possible meanings of the sign and their lack of any relation to oral care products.

14 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 must not be registered.

15 According to settled case-law, the signs and indications covered by Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their characteristics, the goods or services in respect of which registration is sought (judgments of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39, and of 10 September 2015, Laverana v OHIM (BIO organic), T‑610/14, not published, EU:T:2015:613, paragraph 14). 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 link between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics (judgments of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25; of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16; and of 8 September 2016, Dr Vita v EUIPO (69), T‑360/15, not published, EU:T:2016:451, paragraph 14).

16 Whether a sign is descriptive can therefore be assessed only, first, by reference to the goods or services concerned and, second, by reference to the perception of the target public, which consists of the consumers of those goods or services (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38; of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 17; and of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 15).

17 The general interest underlying Article 7(1)(c) of Regulation No 207/2009 is that of ensuring that signs which describe one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 37, and of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 19). That provision prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31) and prevents an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, whose range of available vocabulary for describing their own goods would thereby be limited (judgments of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 18, and of 10 September 2015, BIO organic, T‑610/14, not published, EU:T:2015:613, paragraph 15; see also, to that effect, judgment of 6 March 2007, Golf USA v OHIM (GOLF USA), T‑230/05, not published, EU:T:2007:76, paragraph 32).

18 In the present case, regarding the relevant public, the Board of Appeal was right in finding, in paragraph 11 of the contested decision, that that public consisted of average, reasonably well-informed and reasonably observant and circumspect consumers of toothbrushes in the European Union. The applicant does not, moreover, dispute that finding.

19 As regards the first claim, alleging that the sign applied for is ambiguous and has many meanings, it is sufficient to point out that, according to settled case-law, a word sign must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32; of 30 April 2013, ABC-One v OHIM (SLIM BELLY), T‑61/12, not published, EU:T:2013:226, paragraph 36; and of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 20).

20 In the present case, it must be held, first, that the sign applied for has at least the possible meaning of the mathematical concept of 360°, connected with a circle, in the sense of ‘all round’ and, second, that that meaning designates a characteristic of the goods concerned, namely that of allowing profound brushing and complete, quality dental cleaning.

21 Consequently, the Board of Appeal did not make an error of assessment in finding, in paragraph 13 of the contested decision, that, in view of the wide range of interdental toothbrushes available on the market (including those referred to in the documents which the applicant provided in order to prove acquired distinctiveness), the sign applied for described a toothbrush which facilitated profound brushing. In the context of the interdental toothbrushes present on the market, the meaning of the sign 360° is not ambiguous and describes profound brushing ‘all round’ the tooth.

22 Furthermore, the Court has already held, in the context of proceedings opposing the registration of the word mark 360° SONIC ENERGY applied for by the applicant, that the element ‘360°’, which is a mathematical concept, will be perceived by the relevant public as a technical specification for the goods concerned, evoking the idea of complete and quality dental cleaning (see, by analogy, judgment of 10 December 2013, Colgate-Palmolive v OHIM — dm-drogerie markt (360º SONIC ENERGY), T‑467/11, not published, EU:T:2013:633, paragraph 58).

23 In the light of that finding and the case-law cited in paragraph 19 above, the other meanings of the sign applied for which are invoked by the applicant are, in any event, ineffective.

24 In addition, they are irrelevant in relation to the goods concerned, as is illustrated by the lack of any plausible meaning, with regard to toothbrushes, of a ‘360° temperature (both Fahrenheit or Celsius)’ or a rotation ‘on its own axis relating to a 360 degree view’. However, according to the case-law cited in paragraph 16 above, whether a sign is descriptive can be assessed only by reference to the goods or services concerned.

25 The foregoing finding is not invalidated by the figurative elements of the sign applied for, which consist of the shape of an ellipse in which the word element ‘360°’ is written in white, bold and slightly italic letters on a black background and of a black line surrounding the ellipse. Above that shape is what the applicant calls a ‘swoosh’, which consists of an arc that links two points on the upper side of the ellipse and covers the small break in that ellipse.

26 In that regard, it should be noted that where the word element of a mark is descriptive, the mark is, as a whole, descriptive if the graphic elements of that mark do not divert the relevant public’s attention from the message conveyed by the word element (judgment of 12 April 2016, Choice v EUIPO (Choice chocolate & ice cream), T‑361/15, not published, EU:T:2016:214, paragraph 29; see also, to that effect, judgment of 11 July 2012, Laboratoire Garnier v OHIM (natural beauty), T‑559/10, not published, EU:T:2012:362, paragraph 27). For the purposes of assessing whether a trade mark is descriptive, what is decisive is whether, from the point of view of the relevant public, the figurative elements change the meaning of that mark by reference to the goods concerned (see to that effect, judgments of 15 May 2014, Katjes Fassin v OHIM (Yoghurt-Gums), T‑366/12, not published, EU:T:2014:256, paragraph 30, and of 10 September 2015, BIO organic, T‑610/14, not published, EU:T:2015:613, paragraph 20). Furthermore, where the word element is the aspect of the sign that is emphasised and that holds the consumers’ attention, the Board of Appeal cannot be criticised for focusing its analysis on that word element (see, to that effect, judgment of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 21).

27 In the present case, it must be held, having regard to their banality and their graphic simplicity, that the figurative elements of the sign applied for do not divert the relevant public’s attention from the descriptive message conveyed by the word element ‘360°’. The small break in the ellipse, which is, moreover, covered by the ‘swoosh’, has no bearing in that regard.

28 Furthermore, it must be held, as the Board of Appeal found in paragraph 15 of the contested decision, that those figurative elements, consisting, inter alia, of an ellipse and an arc, reinforce that descriptive message by evoking a characteristic of the goods in question, namely their ability to clean ‘all round’ a tooth because of the bristles arranged in a concentric shape on the head of the toothbrush. Consequently, the first claim cannot be upheld.

29 As regards the second claim, alleging that the numbers are not descriptive, it is sufficient to point out that the sign applied for does not consist solely of the numbers 3, 6 and 0, but also of the ‘°’ symbol, which may easily be understood as meaning ‘degrees’. It is the combination of those numbers and that symbol that evokes the mathematical concept of 360°, connected with a circle, in the sense of ‘all round’. That latter meaning may be descriptive with regard to oral care products.

30 Furthermore, although it is clear from the wording of Article 4 of Regulation No 207/2009 that numerals may be registered as EU trade marks, that is so only subject to the express conditions, which are set out in Article 7 of that regulation and relate, moreover, to all categories of signs, that they are distinctive in relation to the goods and services covered by the application for registration and are not merely descriptive of those goods and services (see, to that effect, judgments of 9 July 2008, Hartmann v OHIM (E), T‑302/06, not published, EU:T:2008:267, paragraphs 29 and 30, and of 19 November 2009, Agencja Wydawnicza Technopol v OHIM (1000), T‑298/06, not published, EU:T:2009:449, paragraphs 14 and 15). However, in the present case, it has been held in paragraph 20 above that the sign ‘360°’ is descriptive in relation to the relevant goods. Consequently, the second claim cannot be upheld.

31 As regards the third claim, alleging that there is no link between the sign applied for and the goods in question, it is sufficient to point out that, according to the documents that the applicant provided before the Board of Appeal, and in particular some of the extracts from advertisements and from catalogues of its goods (see paragraph 21 above), it is possible to clean all around a tooth, and notably the interdental grooves, thanks to toothbrushes that have been specially designed for such cleaning. Moreover, the all-around cleaning of the tooth and complete cleaning of the mouth, known as ‘360°’, is a technical characteristic of the interdental toothbrushes for sale in shops. Consequently, the third claim cannot succeed.

32 It must be held that the Board of Appeal was right in finding, in paragraph 16 of the contested decision, that the link between the sign applied for and the toothbrushes concerned was sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) of Regulation No 207/2009. It is clear that there is a sufficiently direct and specific link between that sign and the goods in question to enable the relevant public immediately to perceive, without further thought, a description of those goods or of one of their characteristics, that of allowing profound brushing and complete, quality dental cleaning.

The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

34 By its second plea, the applicant criticises the Board of Appeal for having found that the trade mark applied for was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In that context, it puts forward four claims. It submits, in the first place, that the sign applied for is abstract and ambiguous, in the second place, that a minimum degree of distinctive character is sufficient, in the third place, that even a sign’s laudatory message does not affect its distinctive character and, in the fourth place, that the sign applied for has distinctive character by virtue of the figurative elements which it contains.

35 In that regard, it should be noted that the applicability of one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 suffices for a sign applied for not to be registrable as an EU trade mark (judgments of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 31, and of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 33; see also, to that effect, judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29).

36 In the present case, since the Board of Appeal correctly found that the ground for refusal laid down in Article 7(1)(c) of that regulation applied, it is unnecessary to examine the merits of the plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009, which must be rejected as ineffective.

37 As regards the alleged infringement of Article 7(1)(b) of Regulation No 207/2009, it may also be noted that the overlap between the grounds for refusal means, in particular, that a sign which is descriptive of characteristics of the goods in question may, on that account, subject to the application of Article 7(3) of that regulation, be devoid of any distinctive character in relation to those goods, without prejudice, moreover, to other reasons why it may be devoid of distinctive character (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46, and of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 35).

38 In any event, as has been held in paragraphs 25 to 28 of the present judgment, the figurative elements of the sign applied for cannot divert the consumers’ attention from the descriptive and therefore non-distinctive message conveyed by the word element ‘360°’. Consequently, contrary to what the applicant claims, the combination of the word element and the figurative elements of that sign does not create a ‘unique and unusual impression’ which is capable of conferring distinctive character on the sign.

The third plea, alleging infringement of the principles of equal treatment and sound administration

40 By its third plea, the applicant claims that the Board of Appeal infringed the principles of equal treatment and sound administration by failing to take into account various national registrations, international registration No 851 995 designating 22 countries of the European Union, and the registration under the number 12966909 of the word sign ‘360°’ as an EU trade mark in respect of ‘toothpaste and mouthwash’ in Class 3.

41 As regards the national registrations and the international registration designating certain Member States, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it. It applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference on the basis of the relevant EU rules alone. EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision adopted in a Member State finding that that sign is registrable as a national trade mark. That is so even if such a decision was adopted under harmonised national legislation (see, to that effect, judgments of 16 June 2015, Gako Konietzko v OHIM (Shape of a cylindrical container in red and white), T‑654/13, not published, EU:T:2015:381, paragraph 46, and of 9 March 2017, Marsh v EUIPO (ClaimsExcellence), T‑308/16, not published, EU:T:2017:154, paragraph 50).

42 As regards the earlier EU trade mark No 12966909, which is relied on by the applicant, it should be noted that, according to settled case-law, the legality of 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 Courts of the European Union, and not on the basis of EUIPO’s previous decision-making practice, which cannot, in any event, bind those Courts (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 35).

43 Although, having regard to the principles of equal treatment and sound administration, EUIPO must 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 nevertheless be consistent with respect for the principle of legality. As a result there cannot be equality as regards unlawful acts, 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 in his favour or for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case, because 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 36).

The fourth plea, alleging infringement of Article 7(3) of Regulation No 207/2009

45 By its fourth plea, the applicant maintains that, contrary to the Board of Appeal’s finding, the trade mark applied for has acquired distinctive character on the European market and should be registered on the basis of Article 7(3) of Regulation No 207/2009. In the first place, the applicant complains that the Board of Appeal erred in its assessment of the evidence submitted. In particular, it criticises the Board of Appeal for having required the submission of evidence of the acquisition of distinctive character in each Member State and submits that proof of use does not have to be provided expressly for each of the Member States. It maintains that distinctive character has been acquired, first, due to high sales figures, second, due to long-standing and widespread use of the sign 360° and, third, due to large amounts invested in the promotion of the goods bearing that sign. In the second place, the applicant complains that the Board of Appeal incorrectly interpreted the stand-alone use of the mark applied for. The applicant maintains that the evidence shows that the mark applied for is used as a stand-alone mark, although, as is usual, it is used together with other marks.

47 Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude a trade mark from being registered if that trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

48 First of all, it must be borne in mind that, although the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark, the fundamental condition is always that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as coming from a particular undertaking. It follows that, in order to register a trade mark which has become distinctive in consequence of the use which has been made of it within the meaning of Article 7(3) of Regulation No 207/2009, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceives the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as coming from a particular undertaking (see, by analogy, judgments of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30; of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraphs 27 and 28; and of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraphs 64 to 67).

49 Next, it is clear from the case-law that, even though it would be unreasonable to require proof of the acquisition of distinctive character through use with regard to each individual Member State (judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62), the fact remains that, when a contested mark is, ab initio, descriptive or devoid of any distinctive character in the European Union as a whole, the acquisition of distinctive character by that mark must be established in relation to the European Union as a whole (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 83; of 21 April 2015, Louis Vuitton Malletier v OHIM — Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraphs 91 to 93; and of 16 March 2016, Työhönvalmennus Valma v OHIM (Shape of a play box containing wooden blocks), T‑363/15, not published, EU:T:2016:149, paragraphs 42 and 43).

50 Furthermore, the evidence provided must show that the mark has come to identify the goods concerned as originating from a particular undertaking, and accordingly to distinguish them from goods of other undertakings. In assessing whether a mark in respect of which registration has been applied for has distinctive character evidence such as the following may be taken into account: the market shares held by the mark; how intensive, geographically widespread and long-standing use of that mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the 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 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 75).

51 As regards the evidential value of the evidence provided, it is clear from the case-law that sales figures and advertising material may be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market research and by statements from trade and professional associations or the specialist public (see, to that effect, judgments of 29 September 2010, CNH Global v OHIM(Combination of the colours red, black and grey for a tractor), T‑378/07, EU:T:2010:413, paragraphs 53 and 54; of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine), T‑25/11, not published, EU:T:2013:40, paragraph 74; and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottlewithout fluting), T‑411/14, EU:T:2016:94, paragraphs 83 and 84).

52 Consequently, the applicant for registration may, in order to establish that the relevant public perceives the mark applied for as an indication of the commercial origin of the goods concerned, be required to state what market share of the market for the goods concerned the sales figures represent and what share of the overall amount of advertising expenditure in that market the advertising costs incurred represent (see, to that effect, judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 79; of 29 January 2013, Manual tile-cutting machine, T‑25/11, not published, EU:T:2013:40, paragraphs 75 and 76; and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a bag), T‑410/10, not published, EU:T:2013:149, paragraphs 86 and 87).

53 In the present case, it must be pointed out that the items of evidence which the applicant submitted in the course of the administrative proceedings before EUIPO, for the purposes of establishing that the mark applied for had acquired distinctive character through use, are, inter alia, the following:

– a table of sales figures achieved in the Member States of the European Union in the years 2008 to 2014;

– an invoice from a Polish media agency in respect of television advertising campaigns for Colgate 360° which were broadcast in 2006, a contract which was entered into with a Portuguese media agency in respect of 360° Toothbrush and is dated 31 March 2010, and an invoice from a Spanish media agency in respect of advertising campaigns for Colgate 360° which ran in 2013;

– a list of commercials for Colgate, 360 Surround Toothbrush, Colgate, 360° Deep Clean Toothbrush, Colgate, 360 Toothbrush, Colgate, 360 ActiFlex Toothbrush and Colgate, 360 Surround Toothbrush, including the duration of the commercial, the country and the channel;

– analyses of the advertising reach with regard to private households in Greece in 2005 of the product Toothbrush CTB 360; with regard to private households in Spain in 2008 and 2010 of the goods Colgate 360°, Colgate 360° Actiflex and Colgate 360° Surround, and with regard to private households in France in the years from 2008 to 2013 of the goods Colgate 360 Brosse à Dents, Colgate 360 Deep Clean B.D, Colgate 360 Actiflex Br.D and Colgate 360 Surround B.D;

– documents containing advertising strategies in Spain in 2009 and from 2011 to 2013 with regard to Colgate 360°, Colgate 360° Actiflex and Colgate 360° Surround and in Portugal in 2008 and 2009 with regard to the goods Colgate Palmolive MTB 360° and Colgate 360° Deep Clean;

– screenshots from commercials broadcast on television in Bulgaria and in Denmark;

– photos of leaflets distributed to professionals and consumers in Belgium, Spain, France and Poland;

– a copy of the letter sent to winners of the ‘Colgate Oral Health Month’ contest;

– screenshots of emails and of extracts from advertisements on social networks;

– photographs of shelves displaying toothbrushes, which were taken in supermarkets in Spain, France, Austria, Poland and Portugal;

– screenshots of a Spanish-language catalogue of the applicant’s toothbrushes and screenshots of Spanish-language newspaper advertisements for the applicant’s toothbrushes;

– documents relating to the victory of the toothbrush Colgate 360° interdentaire (Colgate 360° interdental) in being chosen as the product of the year in France in 2015.

54 It is appropriate to deal with the second complaint first, since that complaint makes it possible to define what the applicant must prove in order to show that the sign applied for has acquired distinctive character through use.

55 As regards the second complaint, relating to the distinctive character which the mark applied for has, in the applicant’s view, acquired in its own right through use, it should be noted at the outset that, according to the case-law cited in paragraph 48 above, the applicant must prove that the relevant class of persons actually perceives the toothbrushes designated exclusively by the mark 360°, as opposed to any other mark which might also be present, such as Colgate, as coming from a particular undertaking, in this case, the applicant itself.

56 However, in the present case, it must be held that, in the items of evidence provided by the applicant, the term ‘360°’ never appears on its own but is always associated with the trade name ‘Colgate’ and with other descriptive terms such as ‘ActiFlex’, ‘DeepClean’ or ‘Surround’. That is apparent from, in particular, the copies of invoices paid to Spanish and Polish media agencies in respect of the toothbrush Colgate 360°, the contract entered into with a Portuguese media agency in respect of the 360° Toothbrush 2010, the list of 30 commercials which includes the duration of the commercials and the countries in and channels on which they were broadcast, the analyses of the advertising reach and the documents containing advertising strategies, the extracts from commercials broadcast on television, the leaflets, the extracts from advertisements disseminated via the internet, the photos taken in supermarkets and the documents relating to the victory of the toothbrush Colgate 360° interdentaire in being chosen as the product of the year in France in 2015.

57 It is true that that finding, in itself, does not necessarily preclude the sign applied for from having acquired distinctive character in its own right through its use in combination with the trade mark Colgate and other descriptive terms.

58 However, it is important to point out that the applicant has not provided any evidence that relates specifically to the relevant public’s perception of the sign applied for taken on its own, such as a market survey or market research that is specific to the sign applied for or, a fortiori, any evidence proving that the sign applied for has acquired distinctive character in its own right through use.

59 Consequently, it must be held, as the Board of Appeal found, that the evidence provided by the applicant does not prove that the relevant class of persons actually perceives a toothbrush designated exclusively by the mark applied for, that is to say the mark 360°, taken on its own, as opposed to any other mark which might also be present, such as the trade mark Colgate, as coming from a particular undertaking, in the present case the applicant.

60 The Board of Appeal was also right in observing, in paragraph 27 of the contested decision, that the fact that the sign applied for is used together with other descriptive elements suggests that consumers will understand it as a technical specification within the product range of toothbrushes bearing the mark Colgate.

61 As regards the first complaint, alleging that the examination of the evidence submitted was incorrect, it must, first of all, be held, that, having regard to the examination of the first two pleas above, the Board of Appeal was right in finding that the territory in which the mark applied for did not have any distinctive character ab initio was the European Union as a whole. Consequently, in the light of the case-law cited in paragraph 49 above, the acquisition of distinctive character by that mark had to be established in relation to each of the Member States.

62 In the present case, the documents provided by the applicant, in particular the advertising material, relate only to Belgium, Bulgaria, the Czech Republic, Denmark, Greece, Spain, France, Hungary, Austria, Poland, Romania, Slovakia, Sweden and the United Kingdom. Such a group of Member States, which does not include, inter alia, Germany and Italy, does not only not constitute the whole of the territory of the European Union, but does not even contain a sufficiently representative part of the combined population of the European Union.

63 The only document relating to almost all the Member States is a table of sales figures achieved in those countries (except in Cyprus, Luxembourg and Malta, for which the sales figures are zero or missing) in the years 2008 to 2014. In that regard, it must be held, in the light of the case-law referred to in paragraphs 51 and 52 above, that the Board of Appeal did not make an error of assessment in finding, in paragraph 24 of the contested decision, that, in the absence of any additional evidence making it possible to ascertain the market shares which those sales figures represented in each Member State and the proportion of consumers in those Member States who perceived the mark applied for as an indication of commercial origin, that table was not on its own capable of proving acquired distinctiveness.

64 That finding also applies as regards the admittedly extensive advertising material provided by the applicant. None of those documents states what share of the overall amount of advertising expenditure in that market the amounts invested in advertising represent, information which may be required pursuant to the case-law referred to in paragraph 52 above.

65 Although the sales figures, the advertising material and the amounts invested in advertising are capable of showing the commercial success of the applicant’s toothbrushes (see, to that effect, judgment of 22 March 2013, Shape of a bag, T‑410/10, not published, EU:T:2013:149, paragraph 86), that evidence is not, on its own, capable of proving that the mark applied for has acquired distinctive character through use in the European Union as a whole.

66 Furthermore, the fact that there has been long-standing use of the sign is not sufficient, as such, to show that the relevant public perceives that sign as an indication of the commercial origin of the goods concerned (see, to that effect, judgment of 8 July 2009, Mars v OHIM — LudwigSchokolade (Shape of a chocolate bar), T‑28/08, not published, EU:T:2009:253, paragraph 66 and the case-law cited).

67 Lastly, as has been held in paragraphs 55 to 59 above, those items of evidence all show the mark applied for, not on its own, but associated with the trade mark Colgate and with other descriptive terms such as ‘ActiFlex’, ‘DeepClean’ or ‘Surround’. However, that evidence does not in any way show the relevant public’s perception of the mark applied for.

68 It follows that the applicant has not proved that the mark applied for, taken purely on its own, has acquired distinctive character throughout the European Union.

69 It follows from all of the foregoing that the fourth plea must be rejected and that the action must therefore be dismissed in its entirety.

70 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.

71 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) >> Colgate-Palmolive v EUIPO (360°) (Intellectual, industrial and commercial property - Trade marks : Judgment) [2017] EUECJ T-333/16 (07 December 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T33316.html Cite as: ECLI:EU:T:2017:875, EU:T:2017:875, [2017] EUECJ T-333/16

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