Judgment of the General Court (First Chamber) of 8 February 2011. Paroc Oy AB v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Community trade mark

Case T-157/08

Paroc Oy AB

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for Community word mark INSULATE FOR LIFE – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009) – Merely confirmatory decision – Partial inadmissibility)

Summary of the Judgment

1.      Actions for annulment – Action against a decision which confirms an earlier decision not challenged in due time – Inadmissibility – Definition of confirmatory decision

(Art. 230 EC)

2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Assessment of distinctive character – Criteria

(Council Regulation No 40/94, Art. 7(1)(b))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Mark consisting of a number of elements – Possibility for the competent authority to carry out an examination of each of the constituent elements of the mark

(Council Regulation No 40/94, Art. 7(1)(b))

4.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character

(Council Regulation No 40/94, Art. 7(1)(b))

1.      A decision which merely confirms an earlier decision not challenged in due time is not an actionable measure. For the purpose of not allowing the time-limit for bringing an action against the confirmed decision to recommence, an action against such a confirmatory decision must be declared inadmissible.

A decision is regarded as a mere confirmation of an earlier decision if it contains no new factors as compared with the earlier measure and is not preceded by any re-examination of the situation of the addressee of the earlier measure.

Determining whether and to what extent the second decision is a mere confirmation of the first decision requires the identification of the respective circumstances of the disputes which gave rise to those decisions. For that purpose, it must be assessed whether the parties to the proceedings at issue, their submissions, their pleas, their arguments and the relevant matters of law and fact characterising those proceedings and determining the operative parts of those decisions were identical or not.

If the second decision is to be regarded as merely confirmatory of the first decision, it is therefore appropriate to examine, firstly, whether the second decision is based on new factors which may affect its operative part and the grounds constituting the essential basis thereof and, secondly, whether, in that decision, the applicant’s situation was re-examined.

(see paras 29-30, 32, 35)

2.      For a trade mark to possess distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings. It is not necessary, for that purpose, for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality.

On the other hand, 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 within the meaning of Article 7(1)(b) of Regulation No 40/94. That is true, in particular, of signs commonly used to market the goods or services concerned. Such signs are in fact deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the product or service in question.

(see paras 44-45)

3.      In order to assess whether a compound word sign is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, the relevant meaning, established on the basis of all its constituent elements and not only one of them, must be taken into account. Consequently, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character. In other words, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed.

(see para. 50)

4.      The word sign INSULATE FOR LIFE, registration of which as a Community trade was sought in respect of the services corresponding to the description ‘Building construction; repair; installation services’ in Class 37 of the Nice Agreement, is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark from the point of view of the public which has a command of the English language.

In the light of the services at issue, the relevant public will understand the mark applied for, immediately and without further analytical effort, as a reference to very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services. Even as a laudatory or promotional slogan, that word sign is not sufficiently original or resonant to require at least some interpretation, thought or analysis on the part of the relevant public, as that public is led to associate that sign immediately with the services at issue, which are capable of being marketed by any undertaking active in the construction and insulation sector.

(see paras 48, 52-53)

JUDGMENT OF THE GENERAL COURT (First Chamber)

8 February 2011(*)

(Community trade mark – Application for Community word mark INSULATE FOR LIFE – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009) – Merely confirmatory decision – Partial inadmissibility)

In Case T‑157/08,

Paroc Oy AB, established in Helsinki (Finland), represented by J. Palm,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 21 February 2008 (Case R 54/2008-2), concerning an application for registration of the word sign INSULATE FOR LIFE as a Community trade mark.

THE GENERAL COURT (First Chamber),

composed of J. Azizi (Rapporteur), President, E. Cremona and S. Frimodt Nielsen, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 28 April 2008,

having regard to the response lodged at the Court Registry on 7 January 2009,

having regard to the Court’s written question to the parties,

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 the closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

 The first application for registration

1        On 4 May 2004, the applicant, Paroc Oy AB, had filed a first application for registration of a Community trade mark (‘the first application for registration’) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration had been applied for was the word sign INSULATE FOR LIFE.

3        The goods in respect of which registration had been applied for were in Classes 6, 17 and 19 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 corresponded, in respect of each of those classes, to the following description:

–        Class 6: ‘Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non‑electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores’;

–        Class 17: ‘Rubber; gutta-percha; gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal’;

–        Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.

4        By decision of 25 August 2005, the examiner had rejected the application for registration in respect of all of the goods at issue on the ground that the trade mark applied for was devoid of any distinctive character and was descriptive within the meaning of Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009).

5        On 24 October 2005, the applicant had brought an appeal against that decision.

6        By decision of 3 April 2006 (‘the first decision’), the Second Board of Appeal of OHIM had dismissed the appeal and had confirmed the refusal to register the word sign INSULATE FOR LIFE pursuant to Article 7(1)(b) and (c) of Regulation No 40/94. In essence, the Board of Appeal had held that the relevant public, whether general or specialist, would understand the combination of words ‘insulate for life’ immediately and without any special analytical effort as an indication that the applicant supplied durable insulation which can last a lifetime. In the absence of any unusual juxtaposition of its elements from the syntactic, grammatical, phonetic and/or semantic points of view, that combination of words is descriptive of the characteristics of the goods at issue and, therefore, necessarily devoid of any distinctive character (see paragraphs 15 and 18 to 20 of the first decision).

7        The applicant did not bring an action against the first decision before the Court.

 The second application for registration

8        On 24 May 2007, the applicant filed a second application for registration of a Community trade mark at OHIM, pursuant to Regulation No 40/94 (‘the second application for registration’).

9        The mark in respect of which registration was applied for is the word sign INSULATE FOR LIFE.

10      The goods and services in respect of which registration was applied for are, firstly, in Classes 6, 17 and 19 of the Nice Agreement, for goods as described in paragraph 3 above, and, secondly, in Class 37 of the Nice Agreement, for services corresponding to the following description: ‘Building construction; repair; installation services’.

11      By decision of 23 October 2007, the examiner rejected the application for registration in respect of all of the goods and services at issue on the ground that the trade mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

12      On 20 December 2007, the applicant appealed against that decision.

13      By decision of 21 February 2008 (‘the second decision’ or ‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and confirmed the refusal to register the word sign INSULATE FOR LIFE pursuant to Article 7(1)(b) of Regulation No 40/94.

14      In essence, the Board of Appeal first of all referred to the reasons set out in paragraphs 15 to 20 of the first decision and noted, firstly, that the submissions of the applicant in relation to the goods in Classes 6, 17 and 19 of the Nice Agreement were, fundamentally, the same as those put forward in support of the first application for registration and, secondly, that the applicant had not ‘put forward any evidence to support a finding that there has been a change in the settled case-law on the subject or any development in the markets at issue which could lead the Board of Appeal to reconsider the grounds on which it ha[d] previously rejected the [first] application for registration’. In this regard, the Board of Appeal stated that the fact that the first decision was based on Article 7(1)(c) of Regulation No 40/94 was irrelevant, since, firstly, it is sufficient for just one of the absolute grounds provided for in Article 7(1) of Regulation No 40/94 to be applicable in order to refuse an application for registration and, secondly, a word sign that is descriptive of the characteristics of the goods at issue is, accordingly, necessarily devoid of any distinctive character with regard to those goods in accordance with Article 7(1)(b) of that regulation. Therefore, the Board of Appeal stated that it did not need to comment further, except on the arguments ‘that [had] not already been put forward in the [first] application for registration […]’ and on the registrability of the mark applied for in relation to the services in Class 37 of the Nice Agreement (see paragraphs 12 to 15 of the contested decision).

15      Furthermore, concerning those services, the Board of Appeal found, in essence, that the relevant public, whether general or specialist, would understand ‘the word sign [in question], as a whole, immediately and without further analytical effort as a reference to the fact that the applicant provides very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services’. The message conveyed by the sign in question is clear, direct and immediate, and is not ambiguous, subject to interpretation, imprecise, allusive or suggestive. For that reason and taking account of its descriptive character, the word sign INSULATE FOR LIFE is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. That assessment is not undermined by the fact that the word sign has been registered as a trade mark for the same goods, in particular, in Finland and in the United Kingdom. The Community trade mark regime is an autonomous system with its own rules binding OHIM in its assessment of the registrability of a sign as a Community trade mark. Moreover, such registration decisions at national level amount only to a fact which may be taken into account, in this context, by OHIM (see paragraphs 17 to 19 of the contested decision).

16      Finally, the Board of Appeal held that the mere fact that in previous cases the examiner had displayed a less strict approach than in this case does not infringe the principle of equality before the law, nor does it provide grounds for annulment of a decision that is reasonable and in accordance with the provisions of Regulation No 40/94. In any event, the Board stated that it was doubtful whether the sign in question was truly comparable to the other signs cited by the applicant (paragraphs 21 and 22 of the contested decision).

 Arguments of the parties

17      The applicant claims that the Court should:

–        annul the contested decision and remit the case to OHIM for the purposes of registration of the trade mark applied for;

–        order OHIM to pay the costs.

18      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Arguments of the parties

19      The applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94.

20      According to the applicant, from the point of view of the relevant public, which consists of average consumers and construction industry professionals, the word sign INSULATE FOR LIFE is not descriptive of the goods and services in respect of which registration has been applied for. Even though the term ‘insulate’ is descriptive, the word sign, as a whole, is suggestive and its meaning is ‘imprecise, distant, vague and unspecific’ with regard to the goods and services at issue, and will thus allow the relevant public to identify their commercial origin.

21      Furthermore, although the combination of words ‘insulate for life’ does not reflect a significantly high degree of inventiveness, that is not sufficient to establish that it is devoid of any distinctive character. According to the applicant, if the reasoning of the Board of Appeal were to be accepted, only marks that meet a specific level of linguistic or artistic creativity or imaginativeness could be registered, which would amount to the application of a criterion which is stricter for suggestive slogans than for other marks.

22      The applicant denies that the word sign INSULATE FOR LIFE would be immediately understood by the relevant public as descriptive of the goods and services at issue. On the contrary, by reason of the second part of that sign (‘for life’), the trade mark applied for is suggestive, as it is ‘distant, vague and unspecific’ with regard to those goods and services, and is capable of giving rise to various kinds of connotations and associations. In support of its argument that the word ‘life’ is not purely descriptive, the applicant states that, in respect of the mark Thomson Life, the German court which referred a question for a preliminary ruling to the Court of Justice in the case that gave rise to its judgment in Case C‑120/04 Medion [2005] ECR I‑8551 had also held that the word was of an average degree of distinctiveness.

23      Furthermore, the fact that each of the elements of a mark, examined separately, is devoid of any distinctive character does not mean that that assessment also applies to the sign as a whole. In respect of suggestive marks, such as the word sign INSULATE FOR LIFE, the applicant submits that it is enough if they are sufficiently inventive and they readily give rise to multiple associations or suggestions, without necessarily requiring specific analysing efforts on the part of the relevant public. In this regard, the Board of Appeal did not take account of the fact that a minimum of distinctiveness was sufficient to permit the registration of the word sign at issue.

24      According to the applicant, the Board of Appeal failed to establish that the word sign INSULATE FOR LIFE was not capable of distinguishing its services from those of other undertakings. It rejects the proposition that that word sign must be understood as meaning ‘high quality insulation that lasts for a life time’. Apart from a mere reference to a dictionary, the Board of Appeal and OHIM have failed to provide the slightest evidence in support of their assertions.

25      The applicant adds that the United Kingdom Patent Office registered the word sign INSULATE FOR LIFE and therefore obviously found that that sign had a minimum of distinctiveness. Moreover, OHIM should not apply in this case a stricter criterion than that which characterised its previous decision-making practice (between 1999 and 2005) in relation to numerous word signs ending with the combination of words ‘for life’, or which led, more recently, to the registration of Community trade mark FACTORS FOR LIFE.

26      Furthermore, in response to a written question from the Court, the applicant claims in essence that its action is admissible because the contested decision is not a mere confirmation of the first decision. According to the applicant, each application for registration requires a new assessment by OHIM having regard to the relevant circumstances in each case, which can evolve over time. The two cases concern two very different trade mark applications, relating to different classes, which require distinct and independent legal analysis, and which were refused on different grounds.

27      OHIM contends that the action should be dismissed and refers, in the main, to the reasons set out in the first and second decisions.

 Findings of the Court

 Admissibility

28      It should be recalled that the conditions for the admissibility of an action concern an absolute bar to proceeding with the action which the Courts of the European Union must consider of their own motion should such an issue arise (see Case T‑209/01 Honeywell v Commission [2005] ECR II‑5527, paragraph 53 and the case‑law cited; see also, to that effect, judgment of 29 November 2007 in Case C‑176/06 P Stadtwerke Schwäbisch Hall and Others v Commission, not published in the ECR, paragraph 18).

29      Furthermore, as is recognised by settled case‑law, a decision which merely confirms an earlier decision not challenged in due time is not an actionable measure. For the purpose of not allowing the time‑limit for bringing an action against the confirmed decision to recommence, an action against such a confirmatory decision must be declared inadmissible (see, to that effect, order of 7 December 2004 in Case C‑521/03 P Internationaler Hilfsfonds v Commission, not published in the ECR, paragraph 41; Case T‑188/95 Waterleiding Maatschappij v Commission [1998] ECR II‑3713, paragraph 108; and order in Case T‑265/03 Helm Düngemittel v Commission [2005] ECR II‑2009, paragraph 62).

30      A decision is regarded as a mere confirmation of an earlier decision if it contains no new factors as compared with the earlier measure and is not preceded by any re-examination of the situation of the addressee of the earlier measure (see order in Internationaler Hilfsfonds v Commission, cited in paragraph 29 above, paragraph 47 and the case‑law cited; orders in Case T‑84/97 BEUC v Commission [1998] ECR II‑795, paragraph 52, and of 10 October 2006 in Case T‑106/05 Evropaïki Dynamiki v Commission, not published in the ECR, paragraph 46).

31      In this case, it is undisputed that the time‑limit for bringing an action against the first decision, pursuant to Article 63(5) of Regulation No 40/94 (now Article 65(5) of Regulation No 207/2009), expired without the applicant having brought such an action. That decision therefore became final and its legality can no longer be challenged before the Court. That finality applies both to the operative part of that decision and to the grounds constituting the essential basis thereof. It must therefore be considered that the Board of Appeal definitively ruled, in the first decision, on the subject-matter of the dispute determined by the first application for registration, which sought to have registered as a Community trade mark the word sign INSULATE FOR LIFE in respect of goods in Classes 6, 17 and 19 of the Nice Agreement. Since the operative part of that decision is capable of producing legal effects and, as a consequence, of adversely affecting interests (see, to that effect, order in Case‑164/02 Netherlands v Commission [2004] ECR I‑1177, paragraph 21), the applicant had to challenge it within the prescribed time‑limit or become time‑barred.

32      It should therefore be determined whether and to what extent the second decision amounts to a mere confirmation of the first decision, which requires the identification of the respective circumstances of the disputes which gave rise to those decisions. For that purpose, it must be assessed whether the parties to the proceedings at issue, their submissions, their pleas, their arguments and the relevant matters of law and fact characterising those proceedings and determining the operative parts of those decisions were identical or not.

33      In that regard, it must be noted that the subject‑matter of this dispute is largely the same as that which gave rise to the first decision, insofar as, by both the first and the second application for registration, the applicant sought to have the word sign INSULATE FOR LIFE registered as a Community trade mark in respect of goods in Classes 6, 17 and 19 of the Nice Agreement, the only difference being that the second application also covered services in Class 37. In that regard, it should be noted that those services, as a group that is homogenous and distinct from that of the goods in Classes 6, 17 and 19, are capable of being the subject of separate assessment and reasoning with a view to determining the registrability of the word sign at issue (see, to that effect and by analogy, order in Case C‑282/09 P CFCMCEE v OHIM [2010] ECR I‑0000, paragraphs 38 to 40; and Joined Cases T‑405/07 and T‑406/07 CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD) [2009] ECR II‑1441, paragraphs 54 and 55), and so the fact that the applicant expanded its application for registration to include those services is not a new factor, within the meaning of the case‑law cited in paragraph 30 above, as compared with the analogous assessment and reasoning relating to those goods, as set out in the first decision. Further, in the first decision, the first application for registration was refused on the basis of Article 7(1)(b) and (c) of Regulation No 40/94, while the second application for registration was refused solely on the basis of Article 7(1)(b) of Regulation No 40/94.

34      It follows that the second decision must be regarded as merely confirmatory of the first decision insofar as it based the refusal to register the word sign INSULATE FOR LIFE, in respect of goods in Classes 6, 17 and 19 of the Nice Agreement, on Article 7(1)(b) of Regulation No 40/94, provided, however, that it does not contain, on these points, any new factors as compared with the first decision and that it was not preceded by any re‑examination of the applicant’s situation.

35      It is therefore appropriate to examine, firstly, whether, having regard to the second application for registration, insofar as it relates to goods in Classes 6, 17 and 19 of the Nice Agreement, the second decision is based on new factors which may affect its operative part and the grounds constituting the essential basis thereof and, secondly, whether, in that decision, the applicant’s situation was re‑examined.

36      In respect of possible new factors, it must be stated that, in its written submissions before both OHIM and the Court, the applicant in essence merely reiterated the arguments that it had already advanced in support of its first application for registration. It added, however, firstly, that the examiner erred in the application of Article 7(2) of Regulation No 40/94 (now Article 7(2) of Regulation No 207/2009), in failing to decide in which Member States the word sign at issue had been refused registration (see paragraph 16 of the contested decision), and, secondly, that that sign had been registered as a national trade mark in Finland and in the United Kingdom (see paragraph 17 of the contested decision).

37      The first argument, based on Article 7(2) of Regulation No 40/94, does not add any new factual element to these proceedings, and it is, in any event, manifestly unfounded in law, so that it was not capable of affecting the operative part of the contested decision and the grounds constituting the essential basis thereof. The Board of Appeal was therefore entitled to reject the argument without re‑examining the applicant’s situation. Article 7(2) of Regulation No 40/94 merely provides that the grounds of non-registrability set out in Article 7(1) are to apply where they obtain in only part of the Community, with the result that it does not create any specific obligation to give reasons.

38      In relation to the second argument, relating to registration at national level of the word sign at issue, it is sufficient to recall settled case‑law – to which the Board of Appeal referred at paragraph 17 of the contested decision – according to which the Community trade mark regime is autonomous and the legality of decisions of OHIM is to be assessed solely by reference to Regulation No 40/94, so that OHIM is neither bound by national registrations (see, to that effect, Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 31) nor required to come to the same conclusions as those arrived at by national authorities in similar circumstances (see, to that effect, Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 49; and judgment of 17 November 2009 in Case T‑473/08 Apollo Group v OHIM (THINKING AHEAD), not published in the ECR, paragraph 43). Further, in the present case, the applicant did not specify at all the grounds upon which the national authorities at issue based their decisions to register the word sign INSULATE FOR LIFE, which could have been, if appropriate, taken into account in the application of Article 7(1)(b) of Regulation No 40/94. In those circumstances, even if it were assumed that the national registrations relied upon amounted to relevant facts which occurred after the adoption of the first decision, the applicant’s second argument was manifestly ineffective and therefore incapable of affecting the operative part of the contested decision and the grounds constituting the essential basis thereof, with the result that the Board of Appeal was required to reject it, without conducting a re‑examination of the applicant’s situation in this regard.

39      Concerning the question of whether the applicant’s situation was or should have been re‑examined in the second decision, it follows from the considerations set out at paragraphs 37 and 38 above that that is not the case in this instance, since no new relevant fact had been put forward by the applicant in support of the second application for registration that could have altered the assessment in the first decision and therefore required a new assessment by the Board of Appeal as to whether or not the mark applied for has distinctive character in relation to the goods in Classes 6, 17 and 19 of the Nice Agreement. Further, in its response to a written question put by the Court, the applicant did not provide any further information in this regard that could undermine that assessment. The Board of Appeal was therefore fully entitled, with regard to the abovementioned factors, to limit itself in essence to referring to paragraphs 15 to 20 of the first decision (see paragraph 13 of the contested decision). Similarly, in response to the applicant’s repeated argument relating to OHIM’s previous decision-making practice – which already existed when the first decision was adopted – in relation to word signs having similarities with the sign at issue, the Board of Appeal was also fully entitled merely to reiterate, in essence, in paragraphs 21 and 22 of the second decision, its reasoning set out in paragraphs 5, 21 and 22 of the first decision. In this regard, the mere fact that paragraph 22 of the contested decision also mentions the refusal to register the word sign BUILT FOR LIFE, which occurred after the adoption of the first decision, is not capable of undermining that finding, since, as a confirmation of OHIM’s previous decision-making practice, that refusal did not and could not give rise to a re‑examination of the applicant’s situation in the light of that practice, within the meaning of the case‑law cited in paragraph 30 above.

40      It follows from the above that, insofar as the contested decision refuses to register the word sign INSULATE FOR LIFE as a Community trade mark in respect of goods in Classes 6, 17 and 19 of the Nice Agreement, on the basis of Article 7(1)(b) of Regulation No 40/94, it amounts to a merely confirmatory decision. In this regard, there is no need to examine whether the confirmatory nature of that decision also extends to the application, in the first decision, of the ground for refusal provided for in Article 7(1)(c) of Regulation No 40/94, since reliance – which has become final – on just one of the grounds listed in Article 7(1) of that regulation is sufficient to refuse registration (see, to that effect, Case C‑104/00 P DKV v OHIM [2002] ECR I‑7561, paragraph 28).

41      It must therefore be held that this action is inadmissible insofar as it is directed against those parts of the contested decision which merely confirm the first decision (see paragraph 40 above).

 Substance

42      In the light of the foregoing considerations, the substance of this action is limited to the question of whether the Board of Appeal was justified in holding that the registration of the word sign INSULATE FOR LIFE as a Community trade mark in respect of services in Class 37 of the Nice Agreement had also to be refused on the basis of Article 7(1)(b) of Regulation No 40/94.

43      Under Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Furthermore, Article 7(2) of the Regulation states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

44      The concept of general interest underlying Article 7(1) of Regulation No 40/94 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end‑user. The absolute ground of non-registrability provided for in Article 7(1)(b) of Regulation No 40/94 thus seeks to enable the consumer or end-user, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 56 and the case‑law cited). Therefore, for a trade mark to possess distinctive character, within the meaning of those provisions, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see Case C‑144/06 P Henkel v OHIM [2007] ECR I‑8109, paragraph 34, and Case C‑398/08 P Audi v OHIM [2010] ECR I‑0000, paragraph 33 and the case‑law cited). It is not necessary, for that purpose, for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (see judgment of 10 October 2008 in Joined Cases T‑387/06 to T‑390/06 Inter-IKEA v OHIM (Representation of a pallet), not published in the ECR, paragraph 27, and THINKING AHEAD, cited in paragraph 38 above, paragraph 26).

45      On the other hand, 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 within the meaning of Article 7(1)(b) of Regulation No 40/94. That is true, in particular, of signs commonly used to market the goods or services concerned. Such signs are in fact deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the product or service in question (see, to that effect, judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 29 and the case-law cited).

46      Moreover, distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of the mark by the relevant public, which is reasonably well-informed and reasonably observant and circumspect (see Audi v OHIM, cited in paragraph 44 above, paragraph 34 and the case-law cited, and Representation of a pallet, cited in paragraph 44 above, paragraph 28 and the case-law cited).

47      Lastly, as regards 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 as such by virtue of such use. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (see Audi v OHIM, cited in paragraph 44 above, paragraphs 35 and 36 and the case-law cited).

48      As regards, first of all, the determination of the relevant public, which is not itself in dispute in this case, it should be stated that the services in Class 37 of the Nice Agreement, in respect of which registration of the word sign INSULATE FOR LIFE has been applied for, constitute building, repair and installation services in the construction sector, inter alia, in relation to houses. Therefore, those services are familiar both to a specialist professional public and, admittedly to a lesser extent, to the average consumer. Given that the word sign at issue is made up of three words found in the English language, the relevant public is those persons who have a command of that language, which represents a very large part of the European public.

49      Moreover, it must be examined whether the Board of Appeal correctly analysed the meaning of the elements and of the whole of the mark applied for, from the point of view of the relevant public, in finding that the word sign is devoid of any distinctive character with regard to the services at issue.

50      As case-law has acknowledged, in the case of compound word signs, the relevant meaning, established on the basis of all their constituent elements and not only one of them, must be taken into account (Case T‑28/06 RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN) [2007] ECR II‑4413, paragraph 32). Consequently, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character (Eurohypo v OHIM, cited in paragraph 44 above, paragraph 41). In other words, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see, to that effect, Case C‑238/06 P Develey v OHIM [2007] ECR I‑9375, paragraph 82, and THINKING AHEAD, cited in paragraph 38 above, paragraph 31).

51      In that regard, the applicant does not dispute that the word ‘insulate’ has no meaning other than to insulate. Further, while the applicant submits that the combination of words ‘for life’ – which inextricably links the preposition ‘for’ with the noun ‘life’ – would not be immediately understood by the relevant public as meaning ‘lasts for a lifetime’ or ‘for a lifetime period’, such an argument must be dismissed. The applicant does not submit any other meaning and merely asserts, vaguely, that that combination of words has various connotations and gives rise to multiple associations and suggestions. Therefore, if they are combined in the word sign INSULATE FOR LIFE, the two components ‘insulate’ and ‘for life’ will be immediately understood as meaning that an insulation activity is long lasting or that it lasts for a lifetime. That sign therefore does not have an unusual or ambiguous character, in the light of the rules of the English language on syntax, grammar, phonetics and/or semantics, which can lead the relevant public, which is reasonably well-informed and reasonably observant and circumspect, to make an association of a different kind.

52      Thus, the Board of Appeal was justified in concluding that, in the light of the services at issue, the relevant public will understand the word sign INSULATE FOR LIFE, immediately and without further analytical effort, as a reference to very long-lasting services related to the use of a particularly durable insulation material, and not as an indication of the commercial origin of those services (see paragraph 19 of the contested decision). Contrary to the applicant’s submissions in response to a written question put by the Court, even as a laudatory or promotional slogan, that word sign is not sufficiently original or resonant to require at least some interpretation, thought or analysis on the part of the relevant public (see, to that effect, Audi v OHIM, cited in paragraph 44 above, paragraphs 44, 45 and 56 to 59), as that public is led to associate that sign immediately with the services at issue, which are capable of being marketed by any undertaking active in the construction and insulation sector.

53      Consequently, it must be concluded that the Board of Appeal was fully entitled to find that the word sign INSULATE FOR LIFE was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 as regards the services in Class 37 of the Nice Agreement and to confirm the refusal to register it as a Community trade mark, and there is no need to decide on whether that sign is also descriptive of those services.

54      Accordingly, this action must be dismissed in its entirety.

 Costs

55      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

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

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Paroc Oy AB to pay the costs.

Azizi

Cremona

Frimodt Nielsen

Delivered in open court in Luxembourg on 8 February 2011.

[Signatures]

* Language of the case: English.

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