30 January 2009 (*)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 7(1)(b) – Application for word mark SAFETY 1ST – Lack of distinctive character – Refusal to register)

In Case C‑131/08 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 31 March 2008,

appellant,

the other party to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,

defendant at first instance,

THE COURT (Fifth Chamber),

composed of M. Ilešič, President of Chamber, A. Tizzano (Rapporteur) and J.‑J. Kasel, Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

1.1 By its appeal, Dorel Juvenile Group Inc. asks the Court to set aside the judgment of the Court of First Instance of the European Communities of 24 January 2008 in Case T‑88/06 Dorel Juvenile Group v OHIM (SAFETY 1ST) ( ‘the judgment under appeal’), dismissing its action for annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) of 11 January 2006 (Case R 16/2004-2, ‘the contested decision’) confirming the examiner’s decision not to register the word mark SAFETY 1ST as a Community trade mark.

2.2 Article 7(1)(b) and (c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides:

‘The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) 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’.

Legal context

3.3 On 15 June 2001 the appellant filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Regulation (EC) No 40/94 for the word sign SAFETY 1ST.

4.4 The goods in respect of which registration of the trade mark was sought are in Classes 12 (‘Bicycles, car seats, car beds, folding convertible car seats, car booster seats, child carriers, namely, strollers and carriages’), 20 (‘Furniture, namely, juvenile high chairs, folding play yards for children, cribs, bassinets, toddler and youth beds, booster seats, bed rails, head boards, mattress for cribs, juvenile dressing tables, cradles and rocking chairs’), 21 (‘Infant bath tubs, baby toilet trainers’) and 28 (Play and exercise equipment for children, namely, doorway jumpers, floor bouncers, floor exercisers, swings, and child walker/jumpers’) 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 amended.

5.5 By decision of 9 June 2004, the examiner refused the application for all the goods applied for on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

6.6 On 21 July 2004 the appellant filed a notice of appeal against the examiner’s decision which was dismissed by the contested decision.

7.7 The Board of Appeal found that, in particular, the relevant public, namely the average English-speaking consumer, did not need to make any intellectual effort in order to perceive ‘1ST’ as being a synonym for the English word ‘first’, especially in combination with the word ‘safety’. In addition, since that public is preoccupied with the safety of the users of the goods in question, it would immediately and unambiguously perceive the sign ‘SAFETY 1ST’ as a laudatory expression informing the potential buyer of those goods that safety is a priority. Consequently, due to the impression produced by the mark applied for as a whole, the connection between that mark and the relevant goods is not sufficiently indirect to endow the mark with the minimum level of distinctiveness required.

The judgment under appeal

8.8 On 17 March 2006, the appellant brought an action before the Court of First Instance for annulment of the contested decision, relying on a single plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94.

9.9 In paragraph 30 of the judgment under appeal, the Court of First Instance, first, noted the case-law according to which a sign which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is only distinctive, for the purposes of Article 7(1)(b) of Regulation No 40/94, if it may be perceived immediately as an indication of the commercial origin of the goods in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin.

10.10 Second, the Court of First Instance held in paragraphs 34 and 35 of the judgment under appeal, that the expression ‘safety first’, used to designate the goods covered by the mark applied for, is devoid of distinctive character within the meaning of Article 7(1)(b). It noted that this expression is well known by the relevant public and frequently used in English to indicate that safety is a priority, especially in respect of goods intended for children, such as the goods in question. Therefore, that expression will be immediately perceived, when used to designate those goods, as information relating to a quality or characteristic of the goods, and, therefore, as an advertising slogan and not as an indication of the commercial origin of those goods.

11.11 In that respect, the Court of First Instance dismissed, firstly, the appellant’s argument alleging, without casting doubt on the lack of distinctive character of the sign ‘SAFETY FIRST’, nevertheless that the mark SAFETY 1ST for which registration is sought is different from the sign ‘SAFETY FIRST’, because the former contains instead of ‘first’, the element ‘1ST’ and that element, a combination of a number and two letters, has an intrinsic distinctive character.

12.12 The Court of First Instance held, in paragraphs 38 and 39 of the judgment under appeal, that ‘1ST’ is another way of writing the ordinal number ‘first’. Therefore, the relevant public, faced with ‘1ST’ in a phrase, will immediately and without the need for any particular intellectual effort read it as ‘first’. Consequently, that public will perceive the mark applied for, taken as a whole, in the same way as ‘safety first’, namely as an indication relating to the characteristics of the goods concerned and not as an indication of the commercial origin of those goods.

13.13 Secondly, in paragraphs 41 to 43 of the judgment under appeal, the Court of First Instance dismissed the appellant’s argument that the relevant public will perceive the sign ‘SAFETY 1ST’ as a fanciful address or street name.

14.14 In reality, according to the Court of First Instance, in English, postal addresses contain numbers (1, 2, 3, etc.) and not ordinal numbers (1ST, 2ND, 3RD, etc.). Moreover, the numbers are placed at the beginning of the address, notably, before the street name concerned, and not at the end. In addition, even in cases where street names contain ordinal number, they are at the beginning rather than at the end (for example ‘5TH Avenue’).

15.15 Thirdly, the Court of First Instance dismissed, in paragraph 45 of the contested judgement, the argument that, since the sign in question has been registered as a trade mark in the United States, registration as a Community trade mark should be possible. According to the Court of First Instance, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone.

16.16 Consequently, in paragraph 46 of the judgment under appeal, the Court of First Instance dismissed the action as being unfounded.

Forms of order sought by the parties

17.17 The appellant is asking the Court to set aside the judgment under appeal and the contested decision and to order OHIM to pay the costs.

18.18 OHIM contends that the Court should dismiss the appeal as unfounded and order the appellant to pay the costs.

The appeal

19.19 In support of its appeal, the appellant submits a single plea in law, alleging an infringement of Article 7(1)(b) of Regulation No 40/94.

20.20 Under Article 119 of the Rules of Procedure, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal without opening the oral procedure.

Arguments of the parties

21.21 In support of its single plea in law, the appellant puts forwards, in essence, eight arguments.

22.22 In the first place, it argues that the mark applied for consists of the word ‘SAFETY’, a number and the letters ‘ST’ and that such a combination is a distinctive element in itself, especially as it is not commonly used in commerce, and that in the sign ‘SAFETY 1ST’ it is an arbitrary juxtaposition of a number and two letters. In addition, the combined elements ‘1’ and ‘ST’ allow that mark to be registered, because those elements do not contain any indication or information concerning the goods covered by the application for registration.

23.23 In the second place, it submits that the Court of First Instance’s judgment is obviously based on wrong facts. It held that the relevant public will perceive the expression ‘safety first’ as information relating to the quality of the goods or as a characteristic of the goods and, accordingly, as an advertising slogan. However, the appellant states that the mark applied for is not made up of the expression ‘safety first’, but of the sign ‘SAFETY 1ST’.

24.24 In the third place, the appellant alleges that, contrary to what the Court of First Instance held in paragraph 35 of the judgment under appeal, the mark SAFETY 1ST does not directly or immediately convey any laudatory message or message promoting the goods in question. The goods concerned will not only be purchased because of safety reasons but also because of comfort and design. Furthermore, producers have to comply with safety standards of their products anyway, so there is no reason that the consumers who buy the appellant’s goods would immediately consider the sign ‘SAFETY 1ST’ as a mere advertising message.

25.25 In the fourth place, according to the appellant, the relevant public must make at least an intellectual effort to perceive the element ‘1ST’ as a synonym of the word ‘first’, even when that element is used in combination with the word ‘SAFETY’. That fact is sufficient to establish a minimal distinctive character. According to Article 7(1)(b) of Regulation No 40/94 and the case-law of the Court, the ground for refusal of registration of trade marks ‘devoid of any distinctive character’ should in fact be conceived only in terms of minimum criteria. Accordingly, a distinctive character, even if weak, is sufficient to allow registration of a sign as a Community trade mark. Therefore, the Court of First Instance carried out too strict an assessment of the conditions for registration of a trade mark.

26.26 In the fifth place, the appellant submits that the Court of First Instance assessed whether the sign ‘SAFETY 1ST’ had a distinctive character essentially by means of a separate analysis of the element, ‘1ST’, instead of an overall perception of that sign.

In the sixth place, the appellant claims that by rejecting its argument that the sign calls to mind the name of a street or an address, based on the fact that the number contained in English postal addresses is placed at the beginning of the address, the Court of First Instance did not take into consideration the fact that this does not prevent the public from perceiving the sign as a ‘fanciful’ address.

28In the seventh place, according to the applicant, the Court of First Instance, in paragraph 35 of the judgment under appeal, erred in law when it held that the expression ‘safety first’ is used to designate ‘information relating to a quality or characteristic of the goods’. Such a criterion is only relevant for the purposes of Article 7(1)(c) of Regulation No 40/94 and not with regard to Article 7(1)(b).

29In the eighth and final place, the appellant maintains that the Patent and Trademark Office, competent for the registration of marks in the United States, authorised the registration of the mark in question. That fact should be sufficient to confirm the distinctive character, within the meaning of Regulation No 40/94, of the mark for which registration is sought.

30In its response, OHIM maintains that the Court of First Instance did not infringe Article 7(1)(b) of Regulation No 40/94 and that the appellant raises a number of arguments regarding facts that are not amenable to review by the Court of Justice.

31With regard to infringement of Article 7(1)(b), OHIM maintains, first, that the appellant’s argument that the goods in question are not purchased only for reasons of safety, but also for comfort and design, does not exclude that any reference seeking to underline that safety has been taken into consideration is immediately perceived by consumers as a positive statement with the result that the mark for which registration is sought does not have any distinctive character.

32Next, OHIM takes the view that the Court of First Instance made a correct analysis of the sign ‘SAFETY 1ST’ as a whole, when it came to the conclusion that it will be understood by the relevant public without any effort as a word combination equivalent to the expression ‘safety first’. OHIM adds in this respect that, contrary to what the appellant submits, the Court of First Instance stated adequate reasons for that finding.

33In addition, OHIM considers, as the Court of First Instance held in paragraph 42 of the judgment under appeal, that it is unlikely that the relevant public considers the sign in question to be an address.

34Finally, the semantic content of the mark applied for indicates to the relevant public a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods.

35As regards the appellant’s arguments which, according to OHIM, concern matters of fact and are, accordingly, inadmissible on appeal, OHIM refers, by way of example, to the argument that the Court of First Instance wrongly held that the element ‘1ST’ is equivalent to the ordinal number ‘first’.

<i>Findings of the Court</i>

36It should be noted that, in accordance with Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. Therefore, the Court of First Instance has exclusive jurisdiction to make findings of fact, save where a substantive inaccuracy in its findings is attributable to the documents submitted to it, and to appraise those facts. That appraisal thus does not, save where the clear sense of the evidence before it has been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (Case C‑104/00 P DKV v OHIM [2002] ECR I‑7561, paragraph 22; Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 41; and Case C‑238/06 P Develey v OHIM [2007] ECR I‑9375, paragraph 97).

37In that regard, it should be noted that, by its first argument, the appellant alleges that (i) the combination of the word ‘SAFETY’ with the number ‘1’ and the letters ‘ST’ and (ii) the elements ‘1’ and ‘ST’, by themselves, have a distinctive character, whereas the Court of First Instance held at paragraph 38 of the judgment under appeal that ‘in English “1ST” is not an arbitrary juxtaposition of a number and two letters, but is another way of writing the ordinal number “first”, which is well known and commonly used in English’.

38In addition, by its fourth argument, the appellant maintains that the relevant public must make an intellectual effort to perceive the element ‘1ST’ as a synonym for the term ‘first’, whereas the Court of First Instance held that ‘average English‑speaking consumers who are confronted with “1ST” in a phrase will immediately and without the need for any particular intellectual effort read it as “first”, even if they take the view that such use is unusual’.

39It must therefore be held that, by its first and fourth arguments, the appellant merely criticises the assessment of the facts made by the Court of First Instance without demonstrating or even alleging any distortion of the facts or evidence by it.

40It follows that those two arguments must be rejected as clearly inadmissible.

41It must also be recalled that, according to settled case-law, it follows from Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court of Justice that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, in particular, Case C‑41/00 P Interporc v Commission [2003] ECR I‑2125, paragraph 15, and Case C‑496/99 P Commission v CAS Succhi di Frutta [2004] ECR I‑3801, paragraph 48).

42In that respect, the Court has explained that the requirements to state reasons under those provisions are not satisfied where an appeal merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the Court of First Instance, including those based on facts expressly rejected by that court, without challenging the interpretation or application of Community law by the Court of First Instance (see, to that effect, in particular, Interporc v Commission, paragraphs 16 and 17 and Commission v CAS Succhi di Frutta, paragraphs 49 and 50).

43In the present case, the third and eighth arguments relied upon by the appellant, whereby the appellant maintains, as it did at first instance, (i) that the mark applied for is not an advertising slogan and (ii) that it has distinctive character because of the fact that it was registered in the United States, do not satisfy those requirements.

44It is sufficient to note that in the present appeal the appellant does not call into question any element of the assessment carried out by the Court of First Instance on those questions, in particular, in paragraphs 39, 40 and 45 of the judgment under appeal, but merely reiterates the arguments already raised at first instance.

45It follows that those two arguments must also be rejected as clearly inadmissible.

46The remainder of the appeal is clearly unfounded.

47First, with regard to the second argument relied upon by the appellant, according to which the Court of First Instance should have based its analysis on the expression ‘safety first’ instead of the sign ‘SAFETY 1ST’, it should be noted that such an argument is based on a misreading of the relevant paragraphs of the judgment under appeal.

48Even though the Court of First Instance refers in paragraph 35 of the judgment under appeal to the expression ‘safety first’ and holds that the average English‑speaking consumer will perceive it as an advertising slogan devoid of distinctive character, its analysis is by no means limited to that expression. On that premise, the Court of First Instance then also held at paragraph 39 of the same judgment that the relevant public will immediately perceive the mark SAFETY 1ST in the same way as the expression ‘safety first’ and concluded from that fact that this mark could also be perceived as an advertising slogan and not as an indication of the commercial origin of the products in question, with the result that it has no distinctive character.

49Next, with regard to the appellant’s fifth argument according to which the assessment whether the sign ‘SAFETY 1ST’ has a distinctive character was not based on an overall perception, it is sufficient to note that the Court of First Instance, at paragraph 38 of the judgment under appeal, expressly examined the perception of the relevant public of the element ‘1ST’ ‘in a phrase’ and held at paragraph 39 of the same judgment that the mark applied for ‘taken as a whole’, will be perceived in the same way as the expression ‘safety first’, namely as an indication referring to the characteristics of the goods concerned.

50With regard to the appellant’s sixth argument, that the Court of First Instance failed to take into consideration the fact that the sign ‘SAFETY 1ST’ can be perceived as a ‘fanciful’ address, it should be noted that, in paragraph 43 of the judgment under appeal, the Court of First Instance specifically held that the mark applied for would not be perceived by the relevant public as a street name, ‘whether imaginary or not’.

51Finally it should be noted that the appellant wrongly submits, in its seventh argument, that the Court of First Instance, in the course of its examination of the distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94, of the mark applied for, took into consideration criteria, such as the quality and the characteristics of the goods in question, which are relevant only to an analysis under Article 7(1)(c).

52It follows from paragraph 35 of the judgment under appeal that, when the Court of First Instance held that the average English-speaking consumer would perceive the expression ‘safety first’ as information relating to a quality or characteristic of the goods in question, it was only in concluding that the mark applied for is an advertising slogan, in the light in particular of case-law cited in paragraph 29 of the same judgment, and not as a basis for its analysis of the distinctive character of the mark.

53In light of the foregoing, the appeal must be dismissed in its entirety as in part clearly inadmissible and in part clearly unfounded.

<b>Costs</b>

54Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM has requested that the appellant be ordered to pay the costs and as the appellant has been unsuccessful, it must be ordered to pay the costs.

On those grounds, the Court (Fifth Chamber) hereby orders:

1.The appeal is dismissed.

[Signatures]

*

Language of the case: English.