About trademark distinctiveness: three times, in one day

On 25 April 2013, the Court of Justice of the European Union (General Court) rendered three judgments in cases initiated against decisions of the Office of Harmonization for the Internal Market (OHIM). In each case, the Court elaborated the rules that should be followed in the assessment of trademark distinctiveness. The decisions of OHIM withstood the Court’s scrutiny in all three cases.

A principal feature a sign needs to have in order to be registered as a trademark is – distinctiveness. This proposition follows from the essential role of trademarks in the course of trade: distinguishing goods and service of one undertaking from the goods and service of others. The most recent pronouncements by the General Court reassert some fundamental rules governing the meaning of distinctiveness.

Case Bayerische Motoren Werke AG v. OHIM

The proceedings initiated before the General Court by the company Bayerische Motoren Werke AG concern OHIM’s refusal to register the company’s sign. OHIM’s Fourth Board of Appeal found the sign to lack any distinctive character.

The mark in question is a word mark, consisting of two words – ECO and PRO. The goods for which the protection was sought belong to Classes 9 (electric and electronic apparatus for controlling, indicating, accumulating and regulating, data processing apparatus and computer) and 12 (motor vehicles and parts thereof included in the class) of the Nice Classification. OHIM grounded the refusal to register in the following argument:

The distinctive character of a mark must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to their perception by the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect.

This cardinal rule is generally applicable in the course of assessing whether a sign satisfies the condition of distinctiveness.

When OHIM and, subsequently, the Court applied the rule to the mark in question, the conclusion was that it did not satisfy the condition of distinctiveness. The first of the two words in the mark, ECO, is commonly used as abbreviation for ecology, while the second word, PRO, may be perceived as “supporting, favoring”, or, in a separate meaning, it serves as the English abbreviation for “professional”. The sum of those two words conveys the meaning of “ecological professional” or “ecological supporting”.

Considering that the distinctive character of a mark must be assessed by reference to the goods at issue, and the relevant goods are motor vehicles, i.e. the electric and electronic apparatus, data processing apparatus and computers, the average, English speaking consumer would take the sign to pertain to ecology supporting, non-polluting vehicles and apparatus; or, to vehicles and apparatus satisfying high requirements and thus capable of being used by professional users. The sign, in other words, merely describes the goods or indicates their quality. As such, the sign cannot indicate the particular undertaking from which the goods originate, and therefore cannot be registered.

Case Metropolis Inmobiliarias y Restauraciones SL v. OHIM

In this case, the company Metropolis Inmobiliarias y Restauraciones SL applied for registration before OHIM of the verbal sign METROINVEST for a range of financial services, insurance services, cash transactions, and real estate services, in Class 36. OHIM rejected the application upon the opposition filed by MIP Metro Group Intellectual Property GmbH & Co. Kg, the proprietor of the figurative mark METRO, registered in Germany for a range of services in Classes 1 to 45, including – in Class 36 – insurance services, financial services, cash transactions, and real estate services.

The earlier mark and the sign applied for share the word METRO. The applicant for registration of METROINVEST claimed that METRO was not the distinctive part of the earlier mark, given that almost everyone understood it to describe “an underground railway”. According to the applicant, such descriptive term could not stop the registration of the mark METROINVEST.

This is where, again, the rule that distinctiveness must be assessed by reference to the goods or services in question comes to fore. The mark in question relates to services in Class 36 of the Nice Convention, and the word METRO has no meaning in relation to such services. In fact, in relation to those services, METRO is a fanciful term, and, as such, represents the distinctive element of the earlier mark. Therefore, the element “metro” in the subsequent sign is identical to the distinctive element of the earlier mark. The other word which the contested mark contains, “invest”, is descriptive in relation to the services in question. OHIM concluded that the similarity of the two signs, coupled with the identity of the goods, caused a likelihood of confusion among the relevant public; on 25 April 2013, the Court supported that conclusion.

Case Su-Shan Chen v. OHIM

In the post published yesterday about this case, we focused on the issue of relationship between the earlier three-dimensional mark and the subsequent design. For the present purposes, the aspect of the judgment pertaining to distinctiveness is relevant.

In the case, the drawings describing the contested Community design presented the shape of cleaning devices. When the proprietor of the earlier three-dimensional mark filed an application for a declaration of invalidity against the design, the proprietor of the design argued, inter alia, that the trademark lacked distinctiveness. The Board of Appeal of OHIM, and subsequently the General Court as well, took the position that distinctiveness had to be presumed, given that the trademark had been registered and had not been declared invalid. Su-Shan Chen failed to provide specific evidence that the shape of the earlier mark lacked distinctiveness.