Reported Trade Mark Cases for October 2004

10 November 2004

Katharine Stephens


Trade Marks

Nichols Plc v. Registrar of Trade Marks (ECJ (Second Chamber); C-404/02; 16.9.04)

This was a reference from the English High Court dated 3 September 2002.

The UK Trade Mark Registry had considered the registration of the surname Nichols as a trade mark for (a) automatic vending machines and (b) food and drink of the kind typically dispensed through such machines, on the basis of its practice of using, as the criterion of whether a surname is common in the UK, the number of times the name appears in the London telephone directory.  The Registry drew a distinction between the more specialised market for vending machines where fewer undertakings operated and granted the application in relation to those products.  Since the food and drink market was, however, made up of a large number of operators, it was difficult for consumers to identify the commercial origin of the products from a common surname, and the application was refused in relation to those products. Nichols appealed and the High Court stayed the proceedings pending reference to the ECJ.

Advocate-General Colomer’s Opinion given on 15 January 2004 had concluded that the distinctive character of a sign comprising a surname depended on a specific assessment of whether the relevant consumer considers it identifies the particular goods/services of an undertaking as compared with others.  The frequency of the occurrence of a surname was one factor, but not decisive.

The ECJ has followed the Advocate General’s Opinion and held that the assessment of the existence or otherwise of the distinctive character of a trade mark which is a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign of any category, in relation first, to the products or services for which the registration is applied, and, second, to the perception of the relevant consumers.  In other words there can be no special rules for the registration of surnames as trade marks, for example refusing a registration which is a common surname to protect other applicants, so that first applicants should not have an unfair advantage over other owners of the same personal name.

The fact that the effects of the registration of trade mark, after it is granted, is limited by Article 6(1)(a), (which enables third parties to use their own name in the course of trade), has no impact on the assessment of the distinctiveness of the trade mark before it is granted.

As a result of the decision, the UK Trade Mark registry will have to end its practice of assessing the registrability of common surnames by reference to the frequency of their occurrence in the telephone directory, and adopt instead the same criteria as for any other trade mark.

SAT.1 SatellitenFernsehen GmbH v. OHIM (ECJ (Second Chamber); C-329/02; 16.9.04

The ECJ set aside the judgment of the CFI which had dismissed an appeal against the refusal by OHIM and the OHIM Board of Appeal to register SAT.2 for goods in Classes 35, 38, 41 and 42 including distribution of radio and TV programmes, production of films and TV programmes and distribution of film rights and development of software.  Upholding the registrability of SAT.2, the ECJ held that elements of a trade mark each of which was devoid of any distinctive character could, when combined, have such distinctive character.

The ECJ held that with trade marks comprising words or a word and a digit, such as SAT.2, the distinctiveness of each of those terms or elements, taken separately, might be assessed in part, but must depend on an appraisal of the whole mark which they comprise.  The mere fact that each of those elements, considered separately, is devoid of distinctive character did not mean that the combination could not have distinctive character.

The CFI had considered that ‘SAT’, as the usual abbreviation, in English and German, for the word “satellite”, designated a characteristic of the services, namely that they had to do with broadcasting via satellite, and was therefore devoid of distinctive character.  The CFI also considered that the elements ‘2’ and ‘.’ were commonly used in trade for the services concerned and thus also devoid of any distinctive character.  It also held the elements were not combined in an unusual fashion so as to make the compound trade mark greater than the sum of its parts.  The ECJ found that the CFI had assessed whether the term SAT.2 had a distinctive character essentially by means of a separate analysis of each of its elements, rather than, as it should have done, on the overall perception of the sign by the average consumer, and that it had not given relevance to aspects such as an element of imaginativeness which ought to be taken into account in such an analysis.

The CFI had also made an error of law in relying on the public interest criterion, according to which trade marks which are capable of being commonly used in trade for the goods/services concerned may not be registered.  Such a public interest criterion is relevant to the assessment as to descriptiveness under Article 7(1)(c) but not to the judging of distinctive character under Article 7(1)(b).

OHIM had merely stated that the mark was descriptive and had not set out reason why it should also be refused under Article 7(1)(b).  This was criticised and the decision set aside.  The ECJ noted that the frequent use of trade marks consisting of a word and a number in the telecommunications sector, indicated that that type of combination could not be considered to be devoid, in principle, of distinctive character.

Procter & Gamble Company v. OHIM (ECJ (Second Chamber); C-107/03; 23.9.04) (in French only)

The ECJ upheld the judgment of the CFI which had dismissed an appeal against the refusal by the OHIM Board of Appeal to register a three-dimensional soap bar shape as a CTM on the basis that the sign was devoid of distinctive character under Article 7(1)(b).

The CFI had held that even though the shape applied for was not strictly identical to a soap bar shape existing on the market, it did not have characteristics of its own capable of informing the consumer of the trade origin of the goods as it would primarily be perceived as having a utilitarian function intended to enable the soap to be gripped easily.

The ECJ held that the CFI’s judgment was not tainted by any error of law. In particular, the ECJ, following Linde and Others and Henkel, found that the CFI rightly pointed out that consumer perception of the distinctive character of a mark is not necessarily the same where the sign consists in the shape of the goods themselves as where a word mark or figurative mark consists in a sign which is independent from the appearance of the products it denotes. While the public is accustomed to perceiving word marks or figurative marks immediately as identifying the trade origin of the goods, that is not necessarily the case where the sign and the outward appearance of the goods are one and the same.

Applied Molecular Evolution Inc v. OHIM (CFI (Second Chamber); T-183/03; 14.9.04)

The CFI has held that OHIM’s Board of Appeal correctly refused the registration of the mark APPLIED MOLECULAR EVOLUTION as a CTM as the term was descriptive and devoid of distinctive character under Article 7(1)(c).

The Court accepted the Board of Appeal’s finding that the relevant public, which is well informed and comprises knowledgeable English speaking consumers, would be in no doubt that the term “molecular evolution” connotes the deliberate alteration of molecules.  While it was true that evolution can have a number of meanings (in particular the applicant argued that it implies a process of gradual, random change, not the direct and targeted optimising of molecules associated with the services claimed, and thus has a contradictory meaning in relation to the services claimed), nevertheless, following OHIM v. Wrigley (Case C-191/01 the DOUBLEMINT case), a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.

The fact that the overall definition of services claimed may concern activities not involving alteration of genetic material did not mean that the mark could be registered for all the services referred to despite the sign being descriptive of certain of the services referred to.  The Board of Appeal was entitled to make an overall assessment of descriptiveness of the sign by reference to all the goods and services listed in the trade mark application.

The CFI also held that the word ‘applied’, rightly held by the Board of Appeal to mean ‘put to practical use’ or ‘practical application’, further reinforced the descriptiveness of the sign by setting out the industrial and commercial purposes of the services relating to molecular engineering.

The CFI further found that the sign as a whole was composed of a combination of words that conformed to English syntax, which meant the association of the words could not diminish their descriptiveness in relation to the services covered.  APPLIED MOLECULAR EVOLUTION was descriptive of the services claimed, namely molecular engineering of compounds for use in a variety of products.

Metro-Goldwyn-Mayer Lion Corporation v. OHIM (CFI (Fourth Chamber); T‑342/02; 16.9.04

Moser Grupo Media SL sought to register the figurative mark “Moser Grupo Media sl” for goods/services in Classes 9, 16, 38, 39 and 41.  Metro-Goldwyn-Mayer (MGM) opposed on the basis of several national rights and a CTM application for MGM for goods/services in those classes.  The Opposition Division upheld the opposition for all goods/services concerned and rejected Moser Grupo Media’s trade mark application, but, in doing so, did not take into account certain early MGM national trade marks (in Austria, Greece and the UK), nor MGM’s CTM application.  MGM appealed, arguing that the Opposition Division should have refused the trade mark application for the whole of the EU in order to prevent a possible conversion of the CTM application into a national trade mark application.  The Board of Appeal dismissed that Appeal and MGM appealed to the CFI.

The CFI held that MGM had not been prejudiced by the failure to consider earlier national marks because nothing prevented an applicant whose CTM application had been rejected following opposition proceedings from filing a national application without having recourse to the conversion procedure, and the decision on any national registration was ultimately left to the competent national authorities.  So far as not taking into account the earlier MGM CTM application, OHIM was right to raise procedural economy considerations – since the opposition could be upheld on the basis of a number of earlier national marks, it was not necessary to suspend the proceedings to await registration of MGM’s CTM.

Reporter’s note: This report has been prepared by my colleagues at Bird & Bird, Audrey Horton and Celine de Andria.  Full copies of all the decisions can be found at http://curia.eu.int/en/content/juris/index.htm