” Do you want to register a phrase as a CTM? Be careful that this is not just too descriptive, even if you are a French company and the phrase is in English. Stephen Groom tells us what happened to French energy giant Suez, trying to register “Delivering the essentials of life”.
Topic: Brands
Who: Suez S. A of Paris.
Where: Court of First Instance of the European Court of Justice
When: March 2008
Law stated as at: 30 April 2008
What happened:
French energy giant Suez tried to register as a Community Trade Mark or "CTM" (valid throughout the EU) the strapline "DELIVERING THE ESSENTIALS OF LIFE."
Suez was trying to register the phrase ("Phrase") in respect of a slew of diverse goods and services including chemical products, scientific instruments, paper and cardboard products, advertising, financial services, building services, telecommunications transport and research and design.
The CTM registering authority, OHIM, threw out Suez' application. OHIM thought the Phrase was a "promotional slogan devoid of elements that would allow consumers easily to associate it with particular goods or services."
Suez appeals
Suez appealed to the Court of First Instance ("CFI") of the European Court of Justice.
OHIM noted with stunning insight that the Phrase was made up of ordinary English words.
Article 7 (1) (b) of EU Regulation (EC) No 40/94 on the Community Trade Mark states economically that "The following signs shall not be registered….trade marks which are devoid of any distinctive character."
The same wording features in the UK's equivalent legislation at section 3 (1) (b) of the Trade Marks Act 1994.
"No surprise, fantasy or imagination" finding
The CFI went on to find quaintly that the Phrase did not provide any "element of surprise." Nor did it show any "elements of fantasy or imagination" which might lead the relevant, English speaking public (for some products average consumers and for others relevant professions) to deduce that the Phrase signified the source of the products it was used on.
Accordingly the Court saw no reason to depart from the OHIM decision and threw out the appeal, leaving Suez with no registration.
Why this matters:
This judgment does not mean that straplines and slogans cannot be registered as trade marks. Where they pass the distinctiveness test, provided no-one else has got there first, they may well find their way onto the Register.
So where new straplines or slogans are contemplated, trade mark searches are always advisable, as well as checks that non registrable rights such as those protected in the UK by the tort of "passing off," do not arise.
In this case, however, the phrase was just too descriptive, too likely to be used by other advertisers quite reasonably and legitimately to describe their own products, to be monopolised by a single trader.
Thus "Delivering the essentials of life" went the same way as "Real People, Real Solutions," "Live Richly", "Never clean your shower again" and "The world's best way to pay" and was refused "registered trade mark" status.
