Interflon v OHMI - Illinois Tool Works (FOODLUBE) (Intellectual property) [2010] EUECJ T-200/08 (29 September 2010)

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(Community trade mark – Invalidity proceedings – Community trade mark FOODLUBE – Absolute grounds for refusal – Descriptiveness – Distinctive character – Article 7(1)(b) and (c) and Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) and Article 52(1)(a) of Regulation (EC) No 207/2009))

Interflon BV, established in Rosendaal (Netherlands), represented by S. Wertwijn, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Novais Gonçalves, acting as Agent,

Illinois Tool Works, Inc., established in Glenview, Illinois (United States),

1 On 10 May 2000, Illinois Tool Works, Inc. filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). The mark for which registration was sought is the word mark FOODLUBE.

2 The goods in respect of which registration was sought are in Classes 1 and 4 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:

3 On 17 July 2001, Illinois Tool Works obtained registration of the Community trade mark FOODLUBE.

4 On 10 November 2004, the applicant, Interflon BV, filed an application for a declaration of invalidity of the mark FOODLUBE, in respect of the goods in Classes 1 and 4, pursuant to Article 51(l)(a) and Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 52(1)(a) and Article 7(1)(b) and (c) of Regulation No 207/2009).

5 On 13 April 2007, the Cancellation Division of OHIM rejected the application for a declaration of invalidity, taking the view that registration of the mark FOODLUBE for goods in Classes 1 and 4 complied with Article 7(1)(b) and (c) of Regulation No 40/94 since that mark was not descriptive of the goods for which it had been registered and was sufficiently distinctive.

6 On 25 April 2007, the applicant filed an appeal, by which it sought the annulment of that decision and of the registration of the mark FOODLUBE for chemicals used in industry and chemical substances for preserving foodstuffs in Class 1, and for industrial oils and greases and lubricants in Class 4. By decision of 3 March 2008 (‘the contested decision’), the Second Board of Appeal dismissed the appeal, taking the view that the term ‘foodlube’ was not descriptive of the goods in Classes 1 and 4 and that the mark FOODLUBE was sufficiently distinctive and could therefore be registered.

9 The applicant puts forward two pleas in law in support of its action, alleging infringement, first, of Article 51(1)(a) and of Article 7(1)(c) of Regulation No 40/94 and, second, of Article 51(1)(a) and of Article 7(1)(b) of that regulation.

10 OHIM contests the merits of the pleas put forward by the applicant and pleads in particular that the evidence produced for the first time before the Court, that is to say, Annexes 2 to 14 to the application, is inadmissible.

11 In accordance with settled case-law, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal within the meaning of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Facts which are pleaded before the Court without having previously been produced before the adjudicating bodies of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion (Case T-�115/03 Samar v OHIM – Grotto(GAS STATION) [2004] ECR II-�2939, paragraph 13, and Case T-�346/04 Sadas v OHIM – LTJ Diffusion(ARTHUR ET FELICIE) [2005] ECR II-�4891, paragraph 19).

12 In the present case, Annexes 2 to 14 contain documents not previously produced before OHIM and must, consequently, be held to be inadmissible, there being no need to assess their probative value or to hear further from the parties (ARTHUR ET FELICIE, paragraph 19 and the case-law cited).

The first plea in law, alleging infringement of Article 51(1)(a) and of Article 7(1)(c) of Regulation No 40/94

13 The applicant takes the view that the mark FOODLUBE is descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94, in that it is exclusively composed of words which serve or could serve to designate, in trade, the kind, intended purpose or other characteristics of the goods in question.

14 The applicant submits that the mark FOODLUBE is a neologism formed by the combination of two words, ‘food’ and ‘lube’. The term ‘food’ means nourishment while the term ‘lube’ is an abbreviation used to designate a lubricant. Consequently, the mark FOODLUBE refers to food-grade lubricants, namely lubricants which can be used in the food industry, and it is not at all necessary for an additional term such as ‘machine’ or ‘system’ to be used to amplify the descriptive effect in order for the relevant public to make the connection between the mark FOODLUBE and the goods for which the registration was sought.

15 The applicant adds that the relevant public comprises, in the present case, professionals in the food-processing industry.

16 The applicant refers to the marks TECHLUBE and CARLUBE, registration of which was refused on the basis of Article 7(1)(c) of Regulation No 40/94 because they are descriptive. The applicant submits that, applying the principle of non-�discrimination, the same should be true of the mark FOODLUBE.

17 The applicant argues that, although the results obtained in an internet search engine for the words ‘food’ and ‘lube’ post-date the application for the mark FOODLUBE, it is apparent from the case-law of the Court of Justice that marks which it is reasonably foreseeable will be used descriptively are also excluded from the right to registration.

18 OHIM states that the applicant was not able to find one single case where the terms ‘food’ and ‘lube’ or ‘foodlube’ are used.

19 OHIM maintains that the term ‘lube’ is a shortening of ‘lubricant’ and that, in accordance with the rules of English grammar, the placing of the word ‘food’ immediately before the word ‘lube’ naturally qualifies the lubricant in question on the basis of its purpose, such that ‘foodlube’ can only be interpreted as meaning ‘lubricant to be used in food’, which is not descriptive of the goods in question.

20 OHIM submits that the refusal of registration of the sign CARLUBE for transmission fluids, and oils and lubricants, greases and maintenance sprays of oil for use with vehicles does not constitute a favourable precedent for the applicant, but confirms the interpretation of the disputed sign as meaning ‘lubricant to be used in food’ and not as meaning ‘lubricant to be used in machines used in the processing of food’.

21 OHIM takes the view that there is nothing in the list of internet search results suggesting that the expression ‘food lube’ was descriptive as at 17 July 2001, that is to say, the date of registration of the Community trade mark.

22 OHIM states that neither the Cancellation Division nor the Board of Appeal disregarded that list on the basis of its date alone, but they did so because of its content. There are only two internet sites on that list in which the words ‘food’ and ‘lube’ are used together. In addition, it is impossible to assess from that list whether the expression ‘foodlube’ is used as a descriptive indication or as a trade mark.

23 OHIM concludes that the Board of Appeal did not err in holding that the term ‘foodlube’ was not descriptive of the goods covered by the mark in question.

24 Article 7(1)(c) of Regulation No 40/94 prohibits registration of 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. Those descriptive signs are deemed incapable of fulfilling the essential indication-of-origin function of the trade mark (Case C-�191/01 P OHIM v Wrigley [2003] ECR I-�12447, paragraph 30, and judgment of 2 April 2008 in Case T-�181/07 Eurocopter v OHIM(STEADYCONTROL), not published in the ECR, paragraph 35). In addition, Article 7(2) of Regulation No 40/94 (now Article 7(2) of Regulation No 207/2009) states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

25 Thus, the signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (Case T-�19/04 Metso Paper Automation v OHIM(PAPERLAB) [2005] ECR II-�2383, paragraph 24, and Case T-�399/08 Clearwire Corporation v OHIM(CLEARWIFI) [2009] ECR II-�0000, paragraph 19).

26 In accordance with settled case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (PAPERLAB, paragraph 25, and Case T-�289/08 Deutsche BKK v OHIM(Deutsche BKK) [2010] ECR II-�0000, paragraph 34).

27 Thus, the distinctiveness of a trade mark must be assessed, firstly, in relation to the goods or services in respect of which registration of the sign is applied for and, secondly, in relation to the perception of the relevant public, which is composed of the consumers of those products or services (Case T-�207/06 Europig v OHIM(EUROPIG) [2007] ECR II-�1961, paragraph 30, and Deutsche BKK, paragraph 36).

28 In order to be caught by Article 7(1)(c) of Regulation No 40/94, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned (OHIM v Wrigley, paragraph 32, and Case T-�344/07 O2 (Germany) v OHIM(Homezone) [2010] ECR II-�0000, paragraph 21).

29 Finally, with regard to neologisms, it must be borne in mind that a combination of descriptive terms is itself, in principle, descriptive of the goods or services for which registration is sought, except where, because of the unusual nature of the combination, the sign in question creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by its component elements, with the result that the word is more than the sum of its parts (STEADYCONTROL, paragraphs 36 and 37, and CLEARWIFI, paragraph 22).

31 In the present case, the goods concerned are chemicals used in industry, substances for preserving foodstuffs, and industrial oils and greases and lubricants. As the Board of Appeal pointed out in paragraph 18 of the contested decision and is not disputed by the applicant, the relevant public for the goods for which the mark FOODLUBE has been registered in essence comprises professionals in the food-processing industry. Accordingly, it is appropriate to examine whether, from the point of view of that public, there is a sufficiently direct and specific relationship between the sign in question and the goods at issue to justify application of Article 7(1)(c) of Regulation No 40/94.

32 As the Board of Appeal held in paragraph 19 of the contested decision, the word sign FOODLUBE is a neologism formed by the combination of two English words, ‘food’ and ‘lube’. It is not disputed that ‘food’ refers to foodstuffs or that ‘lube’ means, in colloquial language, a lubricant.

33 Given that the two words which make up the neologism are English words, the relevant viewpoint in order to establish the descriptiveness of the term ‘foodlube’ is that of English-speaking consumers (see, to that effect, Case T-�219/00 Ellos v OHIM(ELLOS) [2002] ECR II-�753, paragraph 31, and Case T-�295/01 Nordmilch v OHIM(OLDENBURGER) [2003] ECR II-�4365, paragraph 35).

34 The Board of Appeal concluded, in paragraph 21 of the contested decision, that, in view of the meanings of its two components, ‘foodlube’ could be understood by the relevant English-speaking public as referring to a lubricant for foodstuffs and not to food-grade lubricants.

35 Nevertheless, firstly, it must be held that, as is apparent from the documents submitted by the proprietor of the mark FOODLUBE to OHIM, the expression ‘food-grade lubricants’ is commonly used to designate those used to lubricate machinery used in environments where accidental contact with foodstuffs is likely. Thus, contrary to the assertions of the Board of Appeal in paragraph 21 of the contested decision, the fact that the disputed mark does not incorporate the word ‘machinery’ is of limited importance, since that word is not necessary to designate food-grade lubricants.

36 Secondly, as the applicant has submitted, the word ‘lubricant’ is not generally used in connection with foodstuffs, since other words such as ‘oil’ or ‘fat’ are preferred. Accordingly, although the term ‘foodlube’ may be perceived as meaning ‘lubricant for foodstuffs’, it cannot be excluded that the relevant English-�speaking public would understand it as meaning ‘food-grade lubricant’, in the light, in particular, of certain documents submitted by the applicant during the proceedings before OHIM.

37 Thirdly, it must be pointed out that the words ‘food’ and ‘lube’ are descriptive (see paragraph 32 above) and that the neologism ‘foodlube’ consists of a juxtaposition of those words in accordance with the rules of English grammar, without that combination resulting in an expression with additional distinctiveness. Consequently, the neologism ‘foodlube’ does not create, for the relevant public, an impression which is sufficiently far removed from that produced by the mere combination of its components.

38 It follows from all the foregoing that, contrary to the assertions of the Board of Appeal in paragraph 21 of the contested decision, the relevant English-speaking public, faced with the mark FOODLUBE, could regard it as being an abbreviation of the generic term ‘food-grade lubricants’, used to designate lubricants for use in the food-processing industry.

39 Accordingly, it is appropriate to establish whether there is a sufficiently direct and specific relationship between the sign in question and the goods at issue to justify application of Article 7(1)(c) of Regulation No 40/94.

– The existence of a sufficiently direct and specific relationship with the goods at issue

40 It must be borne in mind that the application for a declaration of invalidity made by the applicant to the Board of Appeal related to chemicals used in industry and chemical substances for preserving foodstuffs in Class 1, and industrial oils and greases and lubricants in Class 4.

41 With regard to the goods in Class 4, that is to say, industrial oils and greases and lubricants, it is clear from the documents produced by the applicant before the Board of Appeal that lubricants are substances such as oil or grease which are used to maintain machinery and that the term ‘foodlube’ may designate a category of lubricants for use in the food-processing industry. Accordingly, the mark FOODLUBE, on one of those definitions, can be used to designate industrial oils and greases and lubricants for use in the food-processing industry.

42 Thus, there is a sufficiently direct and specific relationship between the mark FOODLUBE and those goods in Class 4. Consequently, the conclusion must be that, as a whole, the mark FOODLUBE is descriptive, within the meaning of Article 7(1)(c) of Regulation No 40/94, of those goods.

43 That conclusion cannot be called into question by the considerations set out by the Board of Appeal in paragraph 23 of the contested decision, concerning the probative value of the documents produced by the applicant. Contrary to the assertions of the Board of Appeal, it is clear from the pages of the two internet sites in question that the term ‘foodlube’ is used as a generic denomination for a type of lubricant in a listing of different types of goods offered by undertakings.

44 Similarly, contrary to OHIM’s arguments, it is irrelevant that nothing in the list of results of research carried out on the internet suggests that the term ‘foodlube’ was descriptive when the application for registration of the Community trade mark was filed. In that regard, it must be borne in mind that, in order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (OHIM v Wrigley, paragraph 32, and judgment of 21 January 2009 in Case T-�307/07 Hansgrohe v OHIM(AIRSHOWER), not published in the ECR, paragraph 29).

45 In the present case, given that the neologism ‘foodlube’ does not create in the minds of the relevant public an impression sufficiently far removed from that produced by the mere combination of its components (see paragraph 37 above), it would have been reasonable, on registration, to take the view that the mark FOODLUBE could designate food-grade lubricants.

46 With regard to the goods in Class 1, it is appropriate to analyse separately the relationship existing between the sign at issue and, on the one hand, chemicals used in industry and, on the other, chemical substances for preserving foodstuffs.

47 Firstly, with regard to chemicals used in industry, it must be recalled that one of the definitions of the term ‘foodlube’ refers to food-grade lubricants. Lubricants are only one type of chemicals used in industry. There is therefore a sufficiently direct and specific relationship between the mark FOODLUBE and those goods. Consequently, the conclusion must be that the mark FOODLUBE clearly and directly describes a type of chemical used in industry, food-grade lubricants, and that it is therefore descriptive of those goods within the meaning of Article 7(1)(c) of Regulation No 40/94.

48 Secondly, with regard to chemical substances for preserving foodstuffs, the applicant has not produced any evidence enabling the Court to accept that the term ‘foodlube’ describes those goods and that there is, accordingly, a sufficiently direct and specific relationship, so far as the relevant public is concerned, between the mark FOODLUBE and those goods.

49 That conclusion cannot be called into question by the applicant’s argument that, having regard to the practice of OHIM and the national trade mark authorities in taking decisions, the Board of Appeal infringed the principle of non-�discrimination. The lawfulness of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94 and not on the basis of earlier practices. Furthermore, in accordance with settled case-law, the principle of equality of treatment cannot be invoked in relation to unlawfulness, since no person may rely, in support of his claim, on an unlawful act committed in favour of another (Case T-�106/00 Streamserve v OHIM(STREAMSERVE) [2002] ECR II-�723, paragraph 67, and judgment of 30 November 2006 in Case T-�43/05 Camper v OHIM – JC(BROTHERS by CAMPER), not published in the ECR, paragraphs 93 to 95).

50 It follows from all the foregoing that the first plea in law, alleging infringement of Article 51(1)(a) and of Article 7(1)(c) of Regulation No 40/94, must be upheld in part, in as much as the mark FOODLUBE is descriptive of some of the goods for which it was registered, that is to say, chemicals used in industry in Class 1, and industrial oils and greases and lubricants in Class 4, and rejected as to the remainder.

The second plea in law, alleging infringement of Article 51(1)(a) and of Article 7(1)(b) of Regulation No 40/94

51 The applicant submits that the mark FOODLUBE is devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, distinctive character being an essential requirement for registration of a mark.

52 The applicant states that the mark FOODLUBE is incapable of fulfilling its essential function of indicating the origin of the goods.

53 The applicant asserts that the term ‘foodlube’ is a generic term and that the relevant public is used to applying the term to the goods at issue.

55 It follows from settled case-law that, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 40/94 applies (Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 29, and judgment of 9 July 2009 in Case T-�257/08 Biotronik v OHIM(BioMonitor), not published in the ECR, paragraph 36).

56 Having regard to the descriptiveness of the mark FOODLUBE with regard to chemicals used in industry in Class 1, and to industrial oils and greases and lubricants in Class 4, the examination of the distinctive character of the sign at issue will be limited to chemical substances for preserving foodstuffs.

57 Under Article 7(1)(b) of Regulation No 40/94, registration of ‘trade marks which are devoid of any distinctive character’ is to be refused. In addition, it must be borne in mind that Article 7(2) of Regulation No 40/94 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

58 The signs referred to in Article 7(1)(b) of Regulation No 40/94 are signs 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, thus enabling the consumer who acquired them 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 (Case T-�34/00 Eurocool Logistik v OHIM(EUROCOOL) [2002] ECR II-�683, paragraph 37).

59 The distinctive character 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, who are reasonably well informed and reasonably observant and circumspect (Joined Cases C-�473/01 P and C-�474/01 P Procter & Gamble v OHIM [2004] ECR I-�5173, paragraph 33).

60 In the context of the application of the absolute ground for refusal in Article 7(1)(b) of Regulation No 40/94, it must be determined whether the term foodlube, taken as a whole, enables the target public to distinguish the chemical substances for preserving foodstuffs from goods with a different commercial origin (EUROCOOL, paragraph 46).

61 As already stated in paragraph 31 above, the relevant public essentially comprises professionals in the food-processing industry. In addition, the public by reference to whom the absolute ground for refusal must be assessed is an English-speaking public, since the word mark at issue is composed of elements in the English language (paragraph 33 above).

62 It follows from the examination of the term ‘foodlube’ that, taken as a whole, it is one which can be easily and instantly memorised by the target public. Accordingly, in principle, it is inherently capable of being perceived by the target public as a distinctive sign (see, to that effect, EUROCOOL, paragraph 49).

63 The fact that the mark FOODLUBE is made up of components which may allude to the goods for which it was registered and that the combination of those components complies with linguistic rules is not sufficient to justify application of the absolute ground for refusal laid down by Article 7(1)(b) of Regulation No 40/94, unless it amounts to proof that such a sign, looked at as a whole, would not enable the target public to distinguish the applicant’s goods from those of its competitors (see, to that effect, EUROCOOL, paragraph 43).

64 The applicant has not proved that the term ‘foodlube’ is generic or usual with regard to goods used to preserve foodstuffs, for the purpose of identifying or distinguishing those goods (EUROCOOL, paragraph 50).

65 Furthermore, the applicant has failed to establish that the term ‘foodlube’, considered as a whole, would not enable the target public to distinguish its goods from those having a different commercial origin (see, to that effect, EUROCOOL, paragraph 51).

66 Consequently, the Board of Appeal did not err in law by dismissing the appeal, so far as chemical substances for preserving foodstuffs are concerned, pursuant to Article 7(1)(b) of Regulation No 40/94.

67 Accordingly, the second plea must be rejected so far as chemical substances for preserving foodstuffs are concerned.

68 In the light of the foregoing, the contested decision must be annulled in part in so far as it dismisses the appeal in respect of chemicals used in industry in Class 1, and of industrial oils and greases and lubricants in Class 4, and the action dismissed as to the remainder.

69 With regard to the second head of claim, the applicant’s interests are, in the circumstances of the present case, sufficiently protected by a partial annulment of the contested decision, and it is not necessary, in this judgment, to annul the registration of the mark FOODLUBE for the goods at issue or, consequently, to adjudicate on the plea of inadmissibility raised by OHIM.

70 Under Article 87(3) of the Rules of Procedure of the Court, where each party succeeds on some and fails on other heads, the Court may order that the costs be shared. In the present case, the applicant has been successful in part.

71 Nevertheless, the applicant has not sought an order that OHIM pay the costs. It is apparent from case-law that, in the absence of any formal application for the unsuccessful party to be ordered to pay the costs, the latter cannot be made to pay the costs incurred by the successful party (Joined Cases 23/63, 24/63 and 52/63 Henricot and Others v High Authority [1963] ECR 217, 225). Accordingly, each party is to bear its own costs.

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 3 March 2008 (Case R 638/2007-�2) in so far as it dismisses the appeal with regard to chemicals used in industry in Class 1, and industrial oils and greases and lubricants in Class 4;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Interflon v OHMI - Illinois Tool Works (FOODLUBE) (Intellectual property) [2010] EUECJ T-200/08 (29 September 2010) URL: http://www.bailii.org/eu/cases/EUECJ/2010/T20008.html Cite as: [2010] EUECJ T-200/08, [2010] EUECJ T-200/8

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