The EU General Court recently considered whether these brands were sufficiently distinctive for a single trader to be able to register them as trade marks and thereby gain a quasi monopoly right. Miah Ramanathan reports the verdicts and the lessons.
Who: Meredith Corp ("Meredith") and OHIM, case T-524/09
Nike International Ltd ("Nike") and OHIM, case T-512/10
When: September 2011
Where: EU General Court
Law stated as at: 3 October 2011
In these two recent cases, the EU General Court (previously the Court of First Instance) upheld the decisions of the Examiner and the OHIM Board of Appeal to reject Nike's and Meredith's applications to register certain brands as Community trade marks ("CTMs"). The EU General Court confirmed that the marks applied for were not capable as functioning as trade marks as they were non-distinctive and descriptive contrary to Article 7(1) of the CTM Regulation 207/2009 (the "Regulation").
BETTER HOMES AND GARDENS: descriptive contrary to Article 7(1)(c) and lacking in distinctive character contrary to Article 7(1)(b)
Meredith's application for BETTER HOMES AND GARDENS covered goods and services within classes 16, 35 and 36. The Examiner accepted that application in respect of some of the goods and services, but rejected it in relation to "auctioneering services" in class 35 and "insurance; financial affairs; monetary affairs; real estate; advisory; consultancy and information services relating to the aforesaid services" in class 36. Meredith appealed against the decision in respect of the services in class 36.
The EU General Court held that:
- The sign was descriptive contrary to Article 7(1)(c) as it would be understood by the reasonably well-informed, observant, English-speaking average consumer (the "Consumer") to allude to the fact that the services covered by the sign would enable them to acquire better homes and gardens;
- Contrary to Articles 7(1)(a) and (b), the sign BETTER HOMES AND GARDENS was not sufficiently distinctive as it was "not particularly original or resonant", or so unusual in nature that it enabled the Consumer to distinguish the goods and services of the proprietor from those of other undertakings; and
- The fact that the sign was also used as an advertising slogan did not preclude it from registration. However, in this instance the sign BETTER HOMES AND GARDENS was a "banal, informative and laudatory slogan of the services in class 36" which competitors of Meredith could reasonably be expected to wish to use in connection with their own services meaning that the sign would not enable the Consumer to identify the goods and services as originating from a particular undertaking, contrary to Article 7(1)(a).
DYNAMIC SUPPORT: Article 7(1)(c)
Nike had applied to register the sign DYNAMIC SUPPORT for footwear in class 25. The EU General Court agreed with the OHIM Board of Appeal that the sign DYNAMIC SUPPORT was descriptive of footwear and fell within the grounds of absolute refusal under Article 7(1)(c) of the Regulation.
The EU General Court held that:
- OHIM had correctly identified the relevant public to include non-English speaking members of the EU whose grasp of the English language would be sufficient to understand the meaning of the sign DYNAMIC SUPPORT. A sign will be excluded from registration if it is descriptive in any of the official languages of the EU; and
- The sign DYNAMIC SUPPORT was descriptive of footwear and indicated that the footwear would provide "dynamic and adapted support to the consumer who [wore] them." Furthermore the EU General Court noted "that to offer dynamic and adapted support during any sporting activities is one of the essential characteristics of sports footwear."
Why this matters:
The judgment of the EU General Court in respect of the sign BETTER HOMES AND GARDENS highlights the fact that a sign which is also used as an advertising slogan will not automatically be precluded from registration as a CTM. However, if upon examination the sign is a "banal, informative and laudatory slogan of the services" it will be deemed descriptive within the meaning of Article 7(1)(b) of the Regulation and will not be registered.
It is also noteworthy that the fact a sign has been accepted for registration in respect of certain goods and services will not mean that registration is guaranteed for all goods and services. Earlier decisions of the Examiner will have no influence on the way in which subsequent applications are examined.
The decision of the EU General Court in the Nike case reiterates the point that a sign will not be registered if it gives rise to a ground for refusal in any part of the EU and/or the sign is descriptive in any of the official languages of the EU.