Pro-Aqua International v OHMI - Rexair (WET DUST CAN'T FLY) (Judgment) [2015] EUECJ T-133/13 (22 January 2015)

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(Community trade mark — Invalidity proceedings — Community word mark WET DUST CAN’T FLY — Absolute ground for refusal — Lack of distinctive character — Descriptive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)

Pro-Aqua International GmbH, established in Ansbach (Germany), represented by T. Raible, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Rajh and J. Crespo Carrillo, acting as Agents,

the other party to the proceedings before the Board of Appeal, intervener before the Court, being

Rexair LLC, established in Troy, Michigan (United States of America), represented by A. Bayer, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 December 2012 (Case R 211/2012-2), concerning invalidity proceedings between Pro-Aqua International GmbH and Rexair LLC,

composed of M. van der Woude, President, I. Wiszniewska-Białecka and I. Ulloa Rubio (Rapporteur), Judges,

having regard to the application lodged at the Registry of the General Court on 4 March 2013,

having regard to the response of OHIM lodged at the Registry of the General Court on 11 June 2013,

having regard to the response of the intervener lodged at the Registry of the General Court on 10 June 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,

1 On 16 January 2009 the intervener, Rexair LLC, obtained from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) registration of the Community word mark WET DUST CAN’T FLY under number 6668073. That registration had been applied for on 14 February 2008.

2 The goods and services covered by the registration fall within Classes 3, 7 and 37 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cleaners and fragrances for carpet, flooring, upholstery and window treatments’;

– Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines, power-operated water extractors, and parts and attachments thereof’;

– Class 37: ‘Building construction; repair; installation services; repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors; consultation services in the field of repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors’.

3 On 20 January 2011 the applicant, Pro-Aqua International GmbH, filed an application for a declaration of partial invalidity based on Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

4 The application for a declaration of invalidity was directed against a portion of the goods and services covered by the mark WET DUST CAN’T FLY, that is to say:

– Class 3: ‘Substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps; cleaners and fragrances for carpet, flooring, upholstery and window treatments’;

– Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines, power-operated water extractors, and parts and attachments thereof’;

– Class 37: ‘Repair; installation services; repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors; consultation services in the field of repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors’.

5 In support of its application, the applicant claimed that that mark had been registered contrary to the provisions of Article 7(1)(b) and (c) of Regulation No 207/2009.

6 By decision of 30 November 2011, the Cancellation Division of OHIM rejected the application for a declaration of invalidity. First, it held that the registration was not contrary to Article 7(1)(c) of Regulation No 207/2009, given that, inter alia, since there cannot be any such thing as wet dust, the expression ‘wet dust can’t fly’ was fanciful and distinctive and was not descriptive of the goods and services concerned. Secondly, it held that the registration was not contrary to Article 7(1)(b) of that regulation either, given that, inter alia, the expression ‘wet dust can’t fly’ exhibited originality and resonance and had the effect of setting off a cognitive process in the mind of the relevant consumer.

7 On 25 January 2012 the applicant lodged an appeal against the decision of the Cancellation Division, in which it also relied on the provisions of Article 7(1)(b) and (c) of Regulation No 207/2009.

8 By decision of the Second Board of Appeal of OHIM of 17 December 2012 (‘the contested decision’), the appeal was dismissed in its entirety.

9 The Board of Appeal fully approved and endorsed the Cancellation Division’s reasoning and concluded that it had no option but to agree with the Cancellation Division’s opinion that the mark WET DUST CAN’T FLY possessed both originality and resonance, and also had the effect of setting off a cognitive process in the mind of the relevant consumer.

– order OHIM to pay the costs, including those relating to the proceedings before OHIM.

– order the applicant to pay the intervener’s costs, including those relating to the proceedings before OHIM;

– if the Court should uphold all or part of the application, order OHIM to pay all of the costs arising from the action (to the exclusion of the intervener).

13 It is clear that, under the heading ‘Lack of distinctive character’, the applicant, in essence, puts forward arguments addressing the contention that the contested mark is not descriptive. The Court therefore considers that it is necessary to set out the applicant’s arguments by examining, first, the breach of Article 7(1)(c) of Regulation No 207/2009, and then, secondly, the breach of Article 7(1)(b) of Regulation No 207/2009.

14 The applicant argues, in essence, that the contested mark is not appropriate for individualising goods and services with the words ‘wet dust can’t fly’ as far as their identity and origin are concerned.

15 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, may not be registered. Under Article 7(2) of Regulation No 207/2009, it is sufficient that the absolute ground for refusal obtains in only part of the European Union.

16 The signs or indications referred to in 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 essential characteristics — the goods or services in respect of which registration is sought (see, to that effect, Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 39; judgment of 23 October 2007 in Case T‑405/04 Borco-Marken-Import Matthiesen v OHIM (Caipi), not published in the ECR, paragraph 30; and judgment of 30 April 2013 in Case T‑61/12 ABC-One v OHIM (SLIM BELLY), not published in the ECR, paragraph 17).

17 It follows that, in order for a sign to be caught by the prohibition set out in that provision, it is necessary that, having regard to its meaning, there should be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics (see, to that effect, Case T‑458/05 Tegometall International v OHIM — Wuppermann (TEK) [2007] ECR II‑4721, paragraph 80, and SLIM BELLY, cited in paragraph 16 above, paragraph 17).

18 The concept of general interest underlying Article 7(1)(c) of Regulation No 207/2009 requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought may be used freely by all. That provision prevents those signs or indications from being reserved to a single undertaking by reason of their registration as a mark (see, to that effect, Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 62, and Case C‑273/05 P OHIM v Celltech [2007] ECR I‑2883, paragraph 75) and prevents an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, for whom the extent of the vocabulary available to describe their own products is thereby reduced (see, to that effect, judgment of 6 March 2007 in Case T‑230/05 Golf USA v OHIM (GOLF USA), not published in the ECR, paragraph 32, and SLIM BELLY, cited in paragraph 16 above, paragraph 18).

19 As a preliminary point, it must be stated that the applicant does not dispute the definition of the relevant public applied by the Cancellation Division and repeated by the Board of Appeal in the third indent of paragraph 10 of the contested decision. In the present case, it covers both average consumers and professionals in the cleaning and repair sector. Overall, however, the public’s level of attention will be average.

20 First, the applicant claims that the expression ‘wet dust can’t fly’ consists of commonly used words which follow the rules of English grammar. The expression is a series of words with a clear meaning expressing the physical fact that wet dust cannot fly. With regard to the goods and services covered, for example cleaning, polishing and scouring preparations (Class 3), wet vacuum cleaners, power-operated floor scrubbers (Class 7) and the repair and maintenance of wet vacuum cleaners (Class 37), the sign, it submits, describes the mode of operation and the physical effect of using those goods or services.

21 Secondly, the applicant argues that the average consumer, in particular one who is not a native of an English-speaking country, will understand the combination of the words ‘wet’ and ‘dust’ as a common expression but will not notice that, literally, moistened dust is no longer dust once it is wet.

22 Thirdly, the applicant claims that registering descriptive signs is contrary to Regulation No 207/2009, since competitors will not have the opportunity to explain the functionalities of their cleaning machines and cleaning tools in a conventional manner.

23 As regards the first argument, relating to the meaning of the expression ‘wet dust can’t fly’, it must be observed that that expression does not describe the way in which the goods and services concerned operate.

24 As regards the goods in Class 3, even if some of these, such as substances for laundry use, may be liquid in form, which, when applied to dust, will make the dust too heavy to ‘fly’, those products are not designed to moisten dust in order to prevent it from dispersing, but will be used to clean carpets, flooring, upholstery and windows in order to make the dirt disintegrate and disappear.

25 With regard to the goods and services in Classes 7 and 37, with the exception of ‘power-operated water extractors’, which do not refer directly or indirectly to the term ‘dust’, none of the goods and services concerned refers directly or indirectly to a liquid component capable of corresponding to the term ‘wet’.

26 Finally, the applicant is wrong to assert that the goods and services covered relate to ‘wet’ vacuum cleaners and their maintenance and repair. The term ‘wet’ does not appear in the description of the goods concerned. In that regard, it must be noted that Class 7 of the Nice Agreement made provision for the category ‘cleaning appliances utilising steam’. However, it is clear that that category is not covered by the contested mark.

27 While it is the case that some vacuum cleaners or other electric appliances, other than ‘wet vacuum cleaners’, also use liquid components, it must be stressed that those appliances filter the dust through those liquids but are not designed to dampen the dust in order to prevent it from flying.

28 As OHIM states, the expression ‘wet dust can’t fly’ does not consist of the terms ‘dust moistener’ or ‘dust dampener’, which might have been perceived as descriptive of the intended purpose of such goods.

29 Thus, the expression ‘wet dust can’t fly’ does not describe the goods and services at issue, and the consumer will probably not buy them with a view to preventing dust from flying by wetting it.

31 With regard to the applicant’s second argument, relating to a different understanding of that expression by consumers for whom English is not their mother tongue compared with those for whom English is their mother tongue, it must be held that that argument is not relevant. First, the applicant does not explain how the fact that some consumers do not notice that moistened dust is, literally, no longer dust once it has become wet has implications for the allegedly descriptive nature of the expression ‘wet dust can’t fly’. Secondly, the applicant itself indicates that that expression is made up of commonly used English words which follow English grammatical rules. It therefore cannot claim, without contradicting itself, that the words ‘wet’ and ‘dust’ are not part of basic English vocabulary and represent very simple concepts, that is to say, ‘the opposite of dry’ (wet) and ‘fine dry particles of waste’ (dust).

33 With regard to the third argument, which alleges that it is impossible for competitors of the contested mark to explain the functionalities of their cleaning machines and machine tools in the usual way if the registration of the expression ‘wet dust can’t fly’ were to be maintained, that expression, as has just been observed, is not descriptive of the goods and services concerned. Furthermore, it is clear that that expression cannot be understood as a conventional way of describing the functionalities of cleaning appliances and cleaning tools. Consequently, it is not necessary to ensure that that expression is made available to competitors.

35 It follows from the foregoing considerations that the Board of Appeal did not breach Article 7(1)(c) of Regulation No 207/2009 in finding that the mark at issue was not descriptive of the goods and services covered. The first plea in law must therefore be rejected.

36 The applicant takes the view that the expression ‘wet dust can’t fly’ lacks distinctive character since it contains nothing which enables the relevant public to regard it as an indication of origin.

37 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character may not be registered.

38 According to settled case-law, the distinctive character of a mark within the meaning of that article means that the mark serves to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (Case C‑398/08 P Audi v OHIM [2010] ECR I‑535, paragraph 33; judgment of 12 July 2012 in Case C‑311/11 P Smart Technologies v OHIM, [2012] ECR, paragraph 23; judgment of 6 December 2013 in Case T‑428/12 Banco Bilbao Vizcaya Argentaria v OHIM (VALORES DE FUTURO), not published in the ECR, paragraph 42; and judgment of 12 February 2014 in Case T‑570/11 Oetker Nahrungsmittel v OHIM (La qualité est la meilleure des recettes), not published in the ECR, paragraph 20).

39 That distinctive character must be assessed, first, by reference to the goods in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark concerned (Audi v OHIM, cited in paragraph 38 above, paragraph 34; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 24; VALORES DE FUTURO, cited in paragraph 38 above, paragraph 43; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 21).

40 With regard to marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to those marks criteria which are stricter than those applicable to other signs (Audi v OHIM, cited in paragraph 38 above, paragraphs 35 and 36; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 25; VALORES DE FUTURO, cited in paragraph 38 above, paragraph 44; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 22).

41 Whilst the criteria for the assessment of distinctive character are the same for different categories of marks, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories (Audi v OHIM, cited in paragraph 38 above, paragraph 37; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 26; VALORES DE FUTURO, cited in paragraph 38 above, paragraph 44; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 23).

42 Such difficulties do not, however, justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness for word marks consisting of advertising slogans (see, to that effect, Audi v OHIM, cited in paragraph 38 above, paragraph 38; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 27; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 24).

43 In particular, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have distinctive character (Audi v OHIM, cited in paragraph 38 above, paragraph 39; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 28; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 25).

44 Furthermore, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character (Audi v OHIM, cited in paragraph 38 above, paragraph 44; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 29; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 26).

45 The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (Audi v OHIM, cited in paragraph 38 above, paragraph 45; Smart Technologies v OHIM, cited in paragraph 38 above, paragraph 30; and La qualité est la meilleure des recettes, cited in paragraph 38 above, paragraph 27).

46 It is in the light of those considerations that the applicant’s arguments must be examined.

47 In the present case, the applicant argues essentially, on the one hand, that the expression ‘wet dust can’t fly’ does not set off any cognitive process in the mind of the relevant consumer and that the combination of the words ‘dust’ and ‘wet’ is commonly used in the context of filters and cleaning systems, and, on the other hand, that that expression is an advertising slogan which indicates that, due to the use of liquid in order to prevent dust from flying, the performance of the designated products is better than the performance of other cleaning products which do not use a liquid.

48 First of all, it must be stated that the applicant does not produce any document to establish that the combination of the words ‘dust’ and ‘wet’ is commonly used in the context of filters and cleaning systems.

49 Furthermore, the concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character, as was pointed out by the Opposition Division, the reasoning of which was endorsed by the Board of Appeal (sixth indent of paragraph 10 of the contested decision).

50 Consequently, the expression ‘wet dust can’t fly’ calls for an interpretative effort on the part of consumers, who will be unable to associate it immediately with the goods and services in question, since, as has just been indicated, the intended purpose of the goods and services in question is not to ‘wet the dust in order to prevent it from flying’. Furthermore, that slogan exhibits a degree of originality and a certain resonance which make it easy to remember.

51 The Board of Appeal therefore acted correctly in concluding that that expression possessed originality and resonance having the effect of setting off a cognitive process in the mind of the relevant consumer.

52 Finally, with regard to the applicant’s argument that that expression is an advertising slogan which indicates that the performance of the designated products is better than the performance of other products, it must be held that the Board of Appeal was also right to conclude that there was no reason to consider that the expression has any such connotation. Although the slogan is, as the Board of Appeal stated in paragraph 20 of the contested decision, slightly suggestive, there is no evidence to support the specific assumption that those goods and services are superior.

53 Moreover, in any event, as was observed in paragraph 45 above, the laudatory connotation of a word mark does not mean that it cannot, none the less, be appropriate for the purpose of guaranteeing to consumers the origin of the goods or services which it covers.

54 The second plea must therefore be rejected as unfounded and the action dismissed in its entirety.

55 Under Article 87(2) of the Rules of Procedure, 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 forms of order sought by OHIM and the intervener.

56 In addition, the intervener has requested that the applicant be ordered to pay the costs which the intervener incurred for the purposes of the appeal proceedings before OHIM. In that regard, it must be borne in mind that, pursuant to Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs, with the result that they are included in the order for costs made against the applicant under Article 87(2) of the Rules of Procedure, as follows from paragraph 55 above (see judgment of 7 February 2013 in Case T‑50/12 AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), not published in the ECR, paragraph 64 and the case-law cited).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Pro-Aqua International v OHMI - Rexair (WET DUST CAN'T FLY) (Judgment) [2015] EUECJ T-133/13 (22 January 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T13313.html Cite as: ECLI:EU:T:2015:46, EU:T:2015:46, [2015] EUECJ T-133/13

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