Were there any issues with registering a trademark that made a sideswipe at products from a particular country? Perhaps surprisingly, this was not the reason why registration was refused. So what else could be wrong with such a delightful brand? Richard Menzies, not made in the UK, reports.
Topic: Brands
Who: Alvito Holdings Limited v Office for Harmonization in the Internal Market (OHIM)
Where: OHIM Board of Appeal
When: 11 December 2007
Law stated as at: 31 January 2008
What happened:
Back in October 2005, Alvito Holdings Limited ("Alvito") applied to the European Community Trade Mark Registry to register NOT MADE IN CHINA ("the Mark") as a word mark in classes 18, 22 and 25. This application was initially refused on the basis of Article 7(1)(f) CTMR.
On appeal, the OHIM Board of Appeal rejected the application by Alvito to register the Mark as a trade mark. The basis for refusal was Article 7(1)(c) of the Community Trade Mark Regulation (40/94/EEC)(the "CTMR") which prohibits the registration of terms that may serve in trade to designate characteristics of goods or services.
Initial grounds for refusal
Article 7(1)(f) CTMR provides that signs shall not be registered as a Community trade mark "which are contrary to public policy or to accepted principles of morality."
The Examiner held that the application fell foul of this provision because the Mark was a disparaging reference to the quality of Chinese goods and registration "of the mark would be contrary to the spirit of reciprocal goodwill which was sought in Sino-European trading relations."
Alvito appealed the decision.
Decision of OHIM Board of Appeal
Ignoring the tongue-in-cheek jibe at the quality of Chinese goods, the Board interpreted the Mark literally. It held that "Not Made in China" was an objective and neutral expression, as inoffensive as the expression "Made in China" would be. However, on this interpretation, the mark fell foul of Article 7(1)(c) CTMR.
Article 7(1)(c) CTMR provides that signs shall not be registered as a Community trade mark "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."
The Board held that the mark clearly indicated that the goods on which the mark would be used were not manufactured in China, but in a country other than China. The mark was therefore descriptive of geographical origin.
Why this matters:
While the phrase "Not Made in China" was a light-hearted attempt to highlight the quality of Alvito's goods, it also indicated their geographical origin. The Board drew a distinction between "expressions that in themselves express criticism or innuendo and those which express a fact but it is left to the reader, or the consumer, to interpret whether that fact is desirable or undesirable for him."
Trade mark applicants therefore need to be aware that where a phrase may have more than one meaning, a particular interpretation may render it unregistrable as a trade mark. This case also offers an important reminder that a phrase may still be held to be descriptive even if it is worded negatively.
