Bach Flower Remedies v EUIPO - Durapharma (RESCUE) (Judgment) [2016] EUECJ T-337/15 (29 September 2016)

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(EU trade mark — Invalidity proceedings — EU word mark RESCUE — Absolute ground for refusal — Descriptive character — No distinctive character acquired through use — Article 7(1)(c) and (3) of Regulation (EC) No 207/2009 — Article 52(2) of Regulation No 207/2009)

Bach Flower Remedies Ltd, established in Wimbledon (United Kingdom), represented by I. Fowler, Solicitor,

European Union Intellectual Property Office (EUIPO), represented by M. Simandlova and A. Schifko, acting as Agents,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 March 2015 (Case R 2551/2013-1), relating to invalidity proceedings between Durapharma and Bach Flower Remedies,

composed, at the time of deliberation, of G. Berardis, President, D. Spielmann (Rapporteur) and P.G. Xuereb, Judges,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 29 November 2007, the applicant, Bach Flower Remedies Ltd, 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).

3 The goods in respect of which registration was sought are in, inter alia, Classes 3, 5, and 30 to 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 3: ‘Non-medicated toilet preparations and substances; beauty preparations and substances; cosmetics; make-up; lip-stick and lip gloss; dentifrices; fragrances, scents and perfumery; toilet waters and eau de colognes; essential oils; massage oils; aromatherapy products; deodorants for personal use; anti-perspirants; sun-tanning and sun-screening preparations and substances; depilatory preparations and substances; powders, creams and lotions; nail polish; nail polish remover; soaps and shampoos; shaving and after-shave preparations; preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, teeth, lips and nails; shower and bath preparations; bath oils and bath salts; talcum powder; moisturisers; pot pourri; incense; incense sticks; room and furniture fragrances and preparations and substances for perfuming rooms and furniture; non-medicated baby oils and baby creams; non-medicated wipes and wipes impregnated with cosmetic products; cotton wool for cosmetic purposes’;

– Class 5: ‘Pharmaceutical, medicinal, veterinary, homoeopathic, allopathic, remedial, dietetic and sanitary preparations and substances; vitamins and nutrients; food supplements; mineral supplements; medicated drinks and foodstuffs; disinfectants; antiseptics; dressings and materials for dressings; plasters and bandages; diagnostic preparations for medical purposes; flower remedies and flower essences in the nature of remedies; flower essences in the nature of food supplements; preparations and substances derived from plants and flowers for use in the treatment of emotional and psychological disorders and conditions; preparations for medicinal and remedial purposes being derived from plants and flowers’;

– Class 30: ‘Herbal beverages and infusions; non-medicated infusions; aromatic preparations for making tisanes and non-medicated infusions; beverages prepared from the aforesaid goods not included in other classes’;

– Class 31: ‘Agricultural, horticultural and forestry products; beverages, infusions and tisanes for animals and pets; food additives and supplements for animals and pets; and beverages included in this class; beverages prepared from the aforesaid goods not included in other classes’;

– Class 32: ‘Mineral and aerated waters, non-alcoholic beverages; energy and tonic drinks; fruit drinks and fruit juices; tisanes; herbal beverages; non-alcoholic beverages infused with plants, flowers and herbs; non-alcoholic drinks prepared from infusions of plants, flowers and herbs; syrups and other preparations for making beverages; preparations of natural origin for use in making beverages; ingredients, flavourings and additives for beverages’.

5 On 13 March 2012, Durapharma ApS filed an application for a declaration of partial invalidity of the registered trade mark (‘the contested trade mark’), pursuant to Article 52(1)(a) and Article 7(1)(b) and (c) of Regulation No 207/2009. On 25 October 2013, the Cancellation Division declared the contested trade mark invalid owing to its descriptive character and lack of distinctive character in respect of the goods referred to in paragraph 3 above.

6 On 16 December 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

7 By decision of 26 March 2015 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the Cancellation Division’s decision and dismissed the appeal. The Board of Appeal considered, in essence, that the relevant public was the general English-speaking public of the European Union. It stated that the word ‘rescue’ meant, inter alia, the fact of being saved and the fact of providing relief, assistance or aid in a wider sense. Like the Cancellation Division, it considered that there was a direct link between that word and the goods in dispute and that consumers in English-speaking countries, when confronted with the trade mark in question, would understand immediately and without further thought that the goods covered by that mark would help them to return to a good condition or state of health. Notwithstanding the existence of registrations of the word mark RESCUE by EUIPO and of the word marks RESCUE REMEDY and RESCUE in various Member States, the Board of Appeal considered that the contested trade mark was descriptive of the properties of the goods in question. Furthermore, regarding the evidence of distinctive character acquired through use, referred to in Article 7(3) of Regulation No 207/2009, relied upon by the applicant, the Board considered that that evidence had not been adduced for the whole of the relevant territory, which was not limited to the United Kingdom. It therefore dismissed the appeal.

10 In support of its action, the applicant relies on two pleas in law, the first alleging infringement of Article 52(1)(a) in conjunction with Article 7(1)(c) of Regulation No 207/2009 and the second alleging infringement of Article 7(3) of that regulation.

First plea in law: infringement of Article 52(1)(a) in conjunction with Article 7(1)(c) of Regulation No 207/2009

11 The applicant submits that the contested trade mark is not descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 in respect of the various goods in question. First of all, it argues that the definition of the word ‘rescue’ applied by the Board of Appeal is too broad and is incorrect. Next, it considers that the contested trade mark is not descriptive of the goods in Classes 3 and 30 to 32, which do not have the function or intended purpose of providing aid or assistance to consumers. If that had been the case, those goods would belong — in its opinion — to Class 5 of the Nice Agreement. Lastly, it contests the idea that the mark in question is an accurate description of the remedial properties of the goods in Class 5.

13 Under Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid, inter alia on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.

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’ are not to be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

15 According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (see judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited, and of 12 November 2014, Murnauer Markenvertrieb v OHIM (NOTFALL CREME), T‑504/12, not published, EU:T:2014:941, paragraph 15 and the case-law cited).

16 In addition, signs and indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service concerned, in order thereby to enable the consumer who acquires the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 12 November 2014, NOTFALL CREME, T‑504/12, not published, EU:T:2014:941, paragraph 16).

17 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific link between that sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of those goods or those services or one of their characteristics (see judgment of 12 November 2014, NOTFALL CREME, T‑504/12, not published, EU:T:2014:941, paragraph 17 and the case-law cited). Furthermore, to come within Article 7(1)(c) of Regulation No 207/2009, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned (judgment of 6 February 2013, Maharishi Foundation v OHIM (TRANSCENDENTAL MEDITATION), T‑412/11, not published, EU:T:2013:62, paragraph 53).

18 It should also be borne in mind that that descriptive character must be assessed, first, in relation to the goods and services in respect of which registration was sought and, second, in relation to the perception which the relevant public has of the mark (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 12 November 2014, NOTFALL CREME, T‑504/12, not published, EU:T:2014:941, paragraph 18).

19 The applicant’s first plea in law must be examined in the light of those principles.

20 As a preliminary point, it should be noted that the relevant public consists of average consumers, as was stated by the Board of Appeal. In addition, given that the contested trade mark consists of an English word, the assessment of its descriptive character must be carried out having regard to the average English-speaking consumer of the European Union, which, moreover, is not contested by the applicant.

21 In the first place, the contested trade mark consists of the word ‘rescue’, which the Board of Appeal defined as meaning not only ‘the act of saving’ or ‘the act of being saved from danger or distress’, but also ‘[coming] to a person’s rescue [by providing] relief, assistance, or aid’ in a wider sense. The Board of Appeal thus cited the Oxford English Dictionary, according to which the word ‘rescue’ means ‘the act of saving or being saved from danger or distress; the fact of being saved in this way; aid, deliverance’ and ‘the removal of a person from conditions of poverty, social distress, etc.; the support or rehabilitation of underprivileged and socially excluded people’. The word ‘rescue’ is also used in ‘compound nouns with the sense “used for, engaged in or directed towards the rescue of people, property, etc.”’. The Board of Appeal added:

‘Something comes to the rescue of a person if it provides that person with relief, assistance, or aid in a wider sense. Thus, a “rescue drug” is (a) a rescue medication; (b) a drug given to counter the effects of another drug; a “rescue medication” is used to treat an acute episode of pain or exacerbation of a chronic condition such as migraine or asthma; a particular drug used for this purpose (cf. “rescue drug”) and a “rescue remedy” may be a quick solution to a problem.’

22 The applicant challenges that use of the word ‘rescue’, which it regards as too broad. In everyday language, that word means only ‘to save’ and not ‘[to] heal’ or ‘[a] cure’.

23 It should be noted in that regard that, as EUIPO contends, it is apparent from the Oxford English Dictionary that the word ‘rescue’ may refer to the fact of coming to a person’s rescue, but also, in less formal language, to the fact of providing a person with relief, assistance or aid. Therefore, it must be acknowledged that the word ‘rescue’ may be used in a broader sense than merely saving someone from a dangerous situation and may include the concept of relief, the concept of assistance, and the concept of aid.

24 Moreover, the applicant itself cites the Oxford English Dictionary definition, according to which the word ‘rescue’ may mean ‘the removal of a person from conditions of poverty, social distress, etc.; the support or rehabilitation of underprivileged and socially excluded people’, and the Cambridge Online Dictionary, according to which that word means, inter alia, assisting someone by helping them out of a difficult situation. This reinforces the idea that the definition of the word ‘rescue’ may be broader than ‘saving from danger’ sensu stricto and that it includes the concepts of relief, assistance and aid.

25 The applicant’s arguments intended to call in question the definition of the word ‘rescue’ used by the Board of Appeal in the contested decision must, therefore, be rejected.

26 In the second place, the applicant submits that the contested trade mark is not descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009, in respect of the various goods in Classes 3 and 30 to 32. It argues that those goods do not have the function or intended purpose of providing aid or assistance to consumers. It adds that, if that had been the case, those goods would belong to Class 5 of the Nice Agreement. The applicant also argues that other words exist in everyday English terminology to describe the fact of helping a user to return to a good physical condition, such as ‘heal’ and ‘cure’, but that this is not the case for the word ‘rescue’.

27 First of all, it should be borne in mind that the purpose of the classification established by the Nice Agreement is purely administrative and seeks only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services (see, by analogy, judgment of 21 October 2014, Szajner v OHIM — Forge de Laguiole (LAGUIOLE), T‑453/11, EU:T:2014:901, paragraph 88). As is apparent from Article 28(7) of Regulation No 207/2009, goods and services are not to be regarded as being similar to each other on the ground that they appear in the same class of the Nice Agreement, and goods and services are not to be regarded as being dissimilar from each other on the ground that they appear in different classes of the Nice Agreement; that shows that that classification is an indicative one. The assessment of the descriptive character of a sign cannot be carried out except, first, in relation to the perception which the public concerned has of that sign and, second, in relation to the goods or services covered.

28 Furthermore, as stated by EUIPO, it is irrelevant that other words exist in everyday English terminology, such as ‘heal’ or ‘cure’, to describe the fact of helping a user to return to a good physical condition. Article 7(1)(c) of Regulation No 207/2009 does not require, for the purpose of finding that a mark has descriptive character, that the mark in question should be the only way of designating the characteristics described (see, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 57, and of 10 February 2015, IOIP Holdings v OHIM (GLISTEN), T‑648/13, not published, EU:T:2015:83, paragraph 16). Consequently, the argument that other signs or indications exist that are more everyday than that constituting the contested trade mark to designate the characteristics of the goods in question, or that synonyms exist that enable the same characteristics of those goods to be designated, must be rejected.

29 It is now necessary to assess whether, having regard to the meaning of the word ‘rescue’ and the relevant public, that word is or is not descriptive of the goods in Classes 3 and 30 to 32 in respect of which the trade mark was declared invalid.

30 The goods in Class 3 are, in essence, toiletries, perfumery and cosmetics. The applicant submits that those goods are, admittedly, protective, but do not actually rescue consumers. However, as indicated by the Board of Appeal, those goods are used to take care of the body, to clean it, or to embellish it and to help to make it healthier. They may also enrich, condition or hydrate the skin or hair, replenish lost hair or repair damage caused by the sun, chlorine or the ravages of time in general. The use of those goods may thus have the effect of ‘rescuing’ the body or hair. Even without having medicinal properties sensu stricto, those goods can thus aid a person and be perceived as ‘coming to the rescue’ given that, in addition to their aesthetic functions, they may also perform functions of protecting, relieving or repairing the body (see, to that effect, judgment of 12 November 2014, NOTFALL CREME, T‑504/12, not published, EU:T:2014:941, paragraph 24). In that context, there is a sufficiently direct and specific link between the contested trade mark and the goods in Class 3 in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of those goods. The contested trade mark was therefore correctly regarded as having a descriptive character so far as those goods are concerned.

31 The goods in Classes 30 and 32 consist, in essence, of beverages and products for preparing beverages. The applicant argues that they are supposed neither to treat the state of health of the body and mind nor to provide aid or assistance. However, in addition to satisfying the need to quench thirst, those goods may help to improve a person’s physical, emotional or mental health. As indicated by EUIPO, they may thus provide aid or assistance by, for example, having a calming effect, as regards infusions, replenishing energy or salt lost during physical exertion as well as providing nutritional and health benefits, as regards energy drinks, or soothing sore throats, as regards drinks prepared from infusions of plants, flowers and herbs. Accordingly, from the point of view of the relevant public, the word ‘rescue’ enables that public immediately to perceive, without further thought, that those goods may provide assistance in the area of nutrition or health. The Board of Appeal was therefore entitled to consider that English-speaking consumers confronted with the contested trade mark would establish a direct and specific link between the goods at issue and the effect of using them, and that the contested trade mark was therefore descriptive of those goods.

32 According to the applicant, the goods in Class 31 are mainly land products that have not been prepared for consumption and cannot be used in treatments. However, as was stated by the Board of Appeal, it should be noted that those goods may be consumed or used in the treatment of the health of a person or an animal. Contrary to the applicant’s assertions, those goods, while not constituting medicinal foodstuffs for medical or veterinary use, may not only be fit for consumption but may also be used to produce positive effects on people or animals. Such is the case for beverages prepared from agricultural, horticultural and forestry products, such as fresh herbs, and for food additives and supplements for animals and pets. In that regard, it should be borne in mind that it is irrelevant whether the characteristics of the goods described by the sign in question are commercially essential or merely ancillary (see, to that effect, judgment of 10 February 2015, GLISTEN, T‑648/13, not published, EU:T:2015:83, paragraph 16 and the case-law cited). Therefore, it must be held that, in the present case, there is a sufficiently direct and specific relationship between the contested trade mark and the goods in Class 31 to enable the relevant public immediately to perceive, without further thought, the positive effects and assistance which may be provided by the use of those goods.

33 Accordingly, the Board of Appeal was correct to find that the contested trade mark was descriptive of the goods in Classes 3 and 30 to 32 at issue in the present case.

34 In the third place, the applicant contests the Board of Appeal’s assessment so far as the goods in Class 5 are concerned.

35 First of all, the applicant submits that the Board of Appeal failed to establish the descriptive character of the word ‘rescue’ for each of the goods in Class 5.

36 It should be borne in mind in that regard that, although an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services in respect of which trade mark registration is sought and the decision of the competent authority refusing that registration must, in principle, state reasons in respect of each of those goods or services, the competent authority may nevertheless use purely general reasoning where the same ground for refusal is used in respect of a category or group of goods or services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see, to that effect, order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraphs 37 to 41, and judgment of 26 May 2016, Bimbo v EUIPO (THE SNACK COMPANY), T‑331/15, not published, EU:T:2016:323, paragraph 39 and the case-law cited).

37 In the present case, as was stated by the Board of Appeal, the goods in Class 5 are all supposed to treat the state of health of the body and mind and to promote or be conducive to human and animal healthcare and personal hygiene. All those goods having medicinal or remedial properties thus perform a similar — or even identical — function, and thus form a sufficiently homogeneous category for the purposes of the case-law applicable in that regard, even though the precise remedial properties and characteristics of those goods are not described in detail.

38 The applicant’s argument based on the judgment of 30 November 2011, Hartmann v OHIM (Complete) (T‑123/10, not published, EU:T:2011:706), does not undermine that conclusion. In that judgment, the goods covered by the application for registration, supposed to form a ‘full range of care for incontinence’, incorrectly included sanitary preparations for medical use, plasters, materials for dressings, disinfectants, orthopaedic articles and suture materials, which were not directly and specifically intended to be used to treat incontinence. In the present case, by contrast, all the goods in Class 5 concerned constitute a sufficiently homogeneous category of goods.

39 It follows that the Board of Appeal was entitled to analyse the entire category of goods in Class 5.

40 Next, the applicant contests the descriptive character of the contested trade mark with regard to the goods in Class 5, and submits that the word ‘rescue’ could at most be considered merely an allusion to the characteristics of those goods.

41 However, those goods have medicinal or remedial properties and are intended to treat the state of health of the body and mind. As was stated by the Board of Appeal, the link between the trade mark RESCUE and those goods is therefore ‘particularly evident’. The word ‘rescue’ is a description of the purpose of all the goods concerned, which consists in assisting and aiding consumers to return to a good physical condition or state of health. Accordingly, the contested trade mark conveys an immediately comprehensible message which may serve, in trade, to designate the purpose, and thus the characteristics, of the goods in question. Therefore, contrary to the applicant’s assertions, there is, for the relevant public, a sufficiently direct and specific relationship between that mark and the goods concerned.

42 Furthermore, the applicant’s argument that the words ‘heal’ and ‘cure’ could be more aptly used with reference to the goods concerned, repeated regarding the goods in Class 5, must be rejected for the same reasons as set out previously (see paragraph 28 above).

43 Lastly, the applicant argues that the Cancellation Division acknowledged, in another case, the allusive nature of the trade mark DEEP RELIEF in respect of pharmaceutical or veterinary products. However, the applicant confines itself to making a reference to that decision. It should be borne in mind that the Boards of Appeal cannot be bound by the decisions of lower-ranking adjudicating bodies of EUIPO (see judgment of 26 November 2015, Nürburgring v OHIM — Biedermann (Nordschleife), T‑181/14, not published, EU:T:2015:889, paragraph 44 and the case-law cited).

44 Moreover, while EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care the question whether or not it should decide in the same way, the fact remains that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.

45 Consequently, 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 to the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 76).

46 In the present case, it is apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration of signs as trade marks, the present trade mark application was caught by one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009. In those circumstances, having regard to the descriptive character of the contested trade mark, the applicant’s argument based on the existence of an earlier decision of EUIPO must be rejected.

47 It follows from all of the foregoing that, for the relevant public, there is a sufficiently direct and specific relationship between the contested trade mark and all the goods concerned. Accordingly, the Board of Appeal was correct to conclude that the trade mark RESCUE had a descriptive character, within the meaning of Article 7(1)(c) of Regulation No 207/2009, with regard to the goods at issue in the present case.

48 The applicant argues that the contested trade mark is not descriptive and is distinctive in relation to all the goods in question and that it was not therefore required to prove that that trade mark had acquired a distinctive character in any State whatsoever. It adds that, in view of Doctor Bach’s long-standing use of the expression ‘rescue remedy’ in the field of homeopathy as recognised by the Cancellation Division, the United Kingdom would be the relevant territory for the purpose of assessing the distinctive character acquired through use, which has been demonstrated.

49 EUIPO contends, first, that that second plea in law, alleging infringement of Article 7(3) of Regulation No 207/2009, is incomprehensible and must be declared inadmissible on the basis of Article 177(1)(d) of the Rules of Procedure. Secondly, it contends that that plea is, in any event, unfounded.

50 As a preliminary point, it should be borne in mind that, under Article 177(1)(d) of the Rules of Procedure, every application must contain a summary of the pleas in law on which it is based. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action. The same considerations must apply to all claims, which must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity. In addition, in order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, at the very least summarily, provided that the statement is coherent and comprehensible (see, by analogy, judgment of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraphs 26 and 27).

51 In the present case, the applicant satisfies those conditions, given that the statement of evidence in support of the second plea in law is sufficient to enable the Court to identify the arguments constituting the legal and factual basis of the action.

53 Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal set out in Article 7(1)(b) to (d) of that regulation are not to preclude registration of a trade mark if that mark has become distinctive in relation to the goods or services for which registration is sought in consequence of the use which has been made of it.

54 It is apparent from case-law that, in order for the registration of a trade mark to be accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union in which it did not, ab initio, have such character (judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 60). Furthermore, the acquisition of distinctive character through use must have taken place before the application for registration was filed (judgments of 21 April 2010, Schunk v OHIM (Representation of part of a chuck), T‑7/09, not published, EU:T:2010:153, paragraph 40, and of 6 November 2014, Vans v OHIM (Representation of a wavy line), T‑53/13, not published, EU:T:2014:932, paragraph 94).

55 It is also apparent from case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark, and thus distinguishes those goods or services from those of other undertakings. By contrast, signs which do not enable the public concerned to repeat a purchasing experience if it proves to be positive, or to avoid it if it proves to be negative, when acquiring the goods or services in question on a subsequent occasion, are devoid of any distinctive character. In addition, it should be noted that it is in relation to the goods or services in respect of which registration is sought and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect, that the acquisition of distinctive character through use must be assessed (see judgment of 23 February 2016, Consolidated Artists v OHIM — Body Cosmetics International (MANGO), T‑761/14, not published, EU:T:2016:91, paragraph 17 and the case-law cited).

56 The present plea in law must be examined in the light of those considerations.

57 First of all, as can be seen from the examination of the first plea in law above, the contested trade mark was, correctly, considered to be descriptive of the goods in question. Accordingly, the applicant’s argument seeking to contest that finding, with the consequence that it would be exempt from having to prove the acquisition of distinctive character by the mark in question in any State whatsoever, must be rejected as being based on an incorrect premiss.

58 Next, the applicant argues, in essence, that, in any event, the United Kingdom is the only relevant territory for the purpose of assessing the distinctive character acquired through use.

59 However, the Board of Appeal properly concluded that the contested trade mark was descriptive in view of its meaning in English and that the relevant public was the average English-speaking consumer, which, moreover, the applicant has not contested (see paragraph 20 above). It is apparent from case-law that English-speaking consumers are those of Member States in which English is an official language, namely Ireland, the Republic of Malta and the United Kingdom of Great Britain and Northern Ireland, as well as Member States in which the knowledge of English is regarded as a well-known fact, namely the Kingdom of Denmark, the Republic of Cyprus, the Kingdom of the Netherlands, the Republic of Finland and the Kingdom of Sweden (judgment of 9 December 2010, Earle Beauty v OHIM (NATURALLY ACTIVE), T‑307/09, not published, EU:T:2010:509, paragraphs 26 and 53).

60 Therefore, the relevant public for the purpose of assessing the distinctive character acquired through use of the trade mark RESCUE at issue in the present case cannot be limited to consumers in the United Kingdom but also includes, as a minimum, the average consumers of other English-speaking countries. The fact that long-standing use of the contested trade mark on a grand scale in the United Kingdom was acknowledged by the Board of Appeal, as emphasised by the applicant, cannot alter that conclusion. That fact does not preclude a finding, when assessing the distinctive character acquired through use of the contested trade mark in the present case, that the relevant territory is larger than that of the United Kingdom alone.

61 Nor, in the same vein, does the fact that the trade mark RESCUE would be perceived as a reference to Doctor Bach’s ‘rescue remedy’, which has distinctive character, undermine that conclusion concerning the concept of the relevant territory to be taken into account for the purpose of assessing the distinctive character acquired through use of the contested trade mark in the present case (see, to that effect, judgment of 30 September 2009, JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374, paragraphs 43 to 45).

62 Lastly, the applicant, first, in no way establishes that the findings of the Board of Appeal concerning the insufficient proof of use of the mark in Ireland, the Netherlands and the United Kingdom are incorrect and, second, does not contest the Board of Appeal’s assertion that no proof of distinctive character acquired through use has been produced in respect of the Kingdom of Denmark, the Republic of Cyprus, the Republic of Malta, the Republic of Finland or the Kingdom of Sweden.

63 It follows that the applicant’s line of argument regarding the second plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.

64 Under Article 134(1) 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.

65 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

2. Orders Bach Flower Remedies Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Bach Flower Remedies v EUIPO - Durapharma (RESCUE) (Judgment) [2016] EUECJ T-337/15 (29 September 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T33715.html Cite as: [2016] EUECJ T-337/15

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