Case T-242/02
The Sunrider Corp.
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark – Word mark TOP – Refusal of registration – Article 115(4) of Regulation (EC) No40/94 – Definition of ‘written communications’ – Infringement of the principle that decisions must be adopted within a reasonable time – Infringement of the rights of the defence – Absolute grounds for refusal – Article 7(1)(b) and (c) of Regulation No40/94)
Summary of the Judgment
1.Community trade mark – OHIM languages – Ex parte proceedings – Option for OHIM to send ‘written communications’ to the applicant in the second language indicated by him – Scope – Limits – Specific circumstances
(Council Regulation No 40/94, Art. 115(4); Commission Regulation No 216/96, Arts 4(2) and 11)
2.Community trade mark – Proceedings before the OHIM authorities – Obligation of OHIM, including the Boards of Appeal, to adopt decisions within a reasonable time
3.Community trade mark – Decisions of OHIM – Observance of the rights of the defence – Specific circumstances
(Council Regulation No 40/94, Art. 73)
4.Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Word sign TOP
(Council Regulation No 40/94, Art. 7(1)(b))
1.It follows from Article 115(4) of Regulation No 40/94 on the Community trade mark that the option for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of using, in ex parte proceedings, the second language indicated in the application for registration for sending written communications to the applicant is an exception to the principle that the language of proceedings be used, and that the term ‘written communications’ must therefore be interpreted strictly. Since the procedure comprises all such acts as must be carried out in processing an application, it follows that the term ‘procedural documents’ covers any document that is required or prescribed by the Community legislation for the purposes of processing an application for a Community trade mark or necessary for such processing, be they notifications, requests for correction, clarification or other documents. All such documents must therefore be drawn up by OHIM in the language used for filing the application. In contrast to procedural documents, ‘written communications’, as referred to in the second sentence of Article 115(4) of Regulation No 40/94, are any communications which, from their content, cannot be regarded as amounting to procedural documents, such as letters under cover of which OHIM sends procedural documents, or by which it communicates information to applicants.
In that regard, the communication, from the Board of Appeal of OHIM, dealing with the Board of Appeal’s procedural rules, adopted on the basis of Article 4(2) of Regulation No 216/96, and intended to request further observations from the applicant on the rules governing the language of proceedings and to complete the preparation of the case, comes within the said concept of procedural acts.
The note containing the comments of the President of OHIM, requested pursuant to Article 11 of Regulation No 216/96, also constitutes such a procedural act, in so far as those comments constitute expressions of the views of OHIM, in the light of which, in accordance with the second sentence of Article 11, the parties’ rights of the defence are exercised and which the parties are, therefore, entitled to have made available to them in the language of the proceedings.
(see paras 32, 35, 37)
2.The principle that decisions must be adopted within a reasonable time, set out, as a component of the principle of good administration, in Article 41(1) of the Charter of Fundamental Rights of the European Union, proclaimed at Nice on 7December2000, is mandatory in any Community administrative proceedings. That principle must therefore also be applied to proceedings before the various authorities of the Office of Harmonisation in the Internal Market (Trade Marks and Designs), including the Boards of Appeal.
(see paras 51-52)
3.Under the second sentence of Article 73 of Regulation No 40/94, on the Community trade mark, decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. In accordance with that provision, a Board of Appeal of OHIM may base its decision only on matters of fact or of law on which the parties have been able to set out their views. Consequently, in the case in which the Board of Appeal assembles of its own motion facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts in order that the parties may submit their views thereon.
Even though the omission by the Board of Appeal of OHIM to communicate to the applicant the content of an internet site and the results of a search mentioned in its decision does constitute an infringement of the abovementioned provision, such an irregularity is not such as to lead to the annulment of the contested decision, in so far as the grounds of this are based on reasoning independent of the reference to the results of the internet search mentioned and these results only serve to support the conclusions of the decision, and therefore do not constitute a necessary part of their statement of reasons.
(see paras 58-59, 61-62, 64-66)
4.The word sign TOP in respect of which registration as a Community trade mark was sought for ‘Herbal food capsule or powder; herbal nutritional supplement’ and ‘Herbal nutritional supplement’, falling, respectively, into Classes 5 and 29 of the Nice Agreement, lack distinctive character, in regard to the relevant products, within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark.
The term ‘top’ is used in its usual grammatical context and cannot be said to be perceptibly different from a lexically correct construction. Furthermore, because it is commonly used in everyday language, as well as in trade, as a generic laudatory term, this word sign cannot be regarded as appropriate for the purpose of identifying the commercial origin of the goods which it designates and, therefore, of performing the essential function of a trade mark. Finally, the fact that it is capable of being used as such by any manufacturer or supplier of services for the purpose of advertising its goods or services means that its use must not be reserved for a single undertaking, even if such exclusivity were to concern only a specific sector.
(see paras 94-97)