It is a fundamental principle for trade mark registration that a mark must be distinctive and non-descriptive. However, as all those who advise on trade marks will be aware, clients frequently wish to register marks which if not entirely descriptive and non-distinctive, do not fall far short of being so. But given the diversity of languages in the European Community, the same mark may be not be descriptive in every language and distinctiveness could be acquired through use in some jurisdictions. Until 1996, this generally meant that a view could be taken in relation to registrability in each jurisdiction and the language relevant to that jurisdiction. With the advent of the Community Trade Mark ("CTM"), the unified system which covers 15 countries and 11 languages, the assessment of registrability became more complex.
The CTM covers a wide area and most trade mark owners do not use, or even have any intention to use, their mark in every single member state of the European Union. However, if a potential infringer should raise their head in one of those countries in which the trade mark owner does not operate (or had not yet established an operation), the trade mark owner still has the option to take steps to protect its mark.
The question is then raised as to whether it is fair to grant a monopoly right in a mark that is arguably descriptive and non-distinctive in more than one language where distinctiveness could not be shown in every one of those languages (or member states in which those languages are spoken). This was the question before the Court of First Instance (CFI) of the European Court of Justice in the case of Ford Motor Company -v- OHIM (Case T-91/99).
Ford sought to register the mark OPTIONS as a CTM in class 36 for "insurance, warranty, financing, hire-purchase and lease-purchase services". The mark was refused on the basis that it was devoid of any distinctive character in English and French. Ford then appealed to the Second Board of Appeal of OHIM and produced evidence to show that the mark had been used in relation to the supply of services in Belgium, Denmark, the Netherlands, Portugal, Sweden and the UK. No evidence was produced in relation to France. The appeal was dismissed as Ford had not shown that the mark had acquired distinctiveness in France and use there had not been claimed.
On appeal to the CFI, Ford argued that where distinctiveness acquired through use could be demonstrated in a substantial part of the EU, including one major country such as, in this case, the UK, the mark should be allowed to proceed. They said that Article 7(3) of Council Regulation 40/94/EC should therefore override Article 7(2). Article 7(1) provides the grounds for refusal of a mark. Article 7(2) provides that refusal of marks on the basis that they "[lack distinctiveness and are descriptive] shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community". Article 7(3) then provides that Article 7(1) (b), (c) and (d), which mean a mark will be refused on the basis of non-distinctiveness or descriptiveness, do "not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it".
Ford argued that Article 7(2) merely served to clarify the scope of Article 7(1) and in certain circumstances Article 7(3) overruled both of the previous paragraphs and this was such a case.
Ford also pointed out to the CFI that the mark OPTIONS was already registered in Ireland and the UK (in the UK this had been on the basis of acquired distinctiveness) and a script form of the mark was already registered in Denmark. The mark was also registered in the Benelux (which is of course a partly French speaking jurisdiction).
Judgment was given on 30 March 2000. The CFI held that Article 7(3) should be read in the light of the principle set out in Article 7(2). They said that "On that basis, in order to have the registration of a trade mark accepted under Article 7(3) of Regulation No 40/94, the distinctive character acquired through the use of that trade mark must be demonstrated in the substantial part of the Community where it was devoid of any such character under Article 7(1)(b), (c) and (d) [- refusal on the basis of non-distinctiveness or descriptiveness]". To do otherwise would, in their view, damage the unitary nature of the CTM regime. Where an absolute ground for refusal exists in respect of any part of the European Union, distinctiveness acquired through use must be shown in all such parts.
In this case, Ford had not disputed the lack of distinctiveness of the word OPTIONS in the French language. Nor did it claim that the mark had been used in such a way that it had acquired a distinctive character in France. The application was therefore dismissed.
This case is an interesting application of the principles, but does not really seem to change what, from a common sense perspective, is already the case and the current practice of the Office. It seems that "substantial part of the community" must be taken in light of the facts of each individual case. If a mark is non-distinctive or descriptive in say two languages, it seems fair that an applicant should have to show that the mark has become distinctive in all those parts of the Community where each of those languages is spoken as a first language. In other words, Ain the substantial part of the Community where it was devoid of any such character under Article 7(1)(b), (c) or (d). Otherwise, there is a substantial danger that innocent "infringers", in this case in France, would be subject to at least the possibility of litigation resulting from what would generally be considered to be the normal conduct of their businesses and the accepted application of technical words to products or services they might choose to provide.
First published in WIPR in May 2000.