Up until relatively recently, CTM applicants could avoid OHIM’s official practice of rejecting descriptive or non–distinctive word marks by combining the word with a logo or figurative element. However, over the last year or so, OHIM has adopted an approach which suggests that the Office is determined to thwart any such attempts to circumvent its rules on descriptive marks. An examination of the decisions of the General Court and the Board of Appeals over the months of June, July, August, September and October 2015 show that the OHIM has been consistent in rejecting such marks for registration.

The reasoning behind this stricter approach is simple: OHIM deems such marks to be incapable of performing the essential function of a trademark i.e. even though such marks contain figurative elements, they are not a proper indication of the commercial origin of the relevant goods or services. It appears that the Board of Appeal has implemented a high distinctiveness standard for figurative elements where it can be said such figurative elements merely emphasise the descriptive meaning of the word at issue.

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This was recently demonstrated in Case T-553/14, Wm. Wrigley Jr. Company. On 24 June 2015, the General Court held that the Board of Appeal was right to refuse to register the Extra logo. This was because “the figurative element of the sign applied for, consisting in a sphere or full circle divided into two halves in different tones, is a banal shape which will be perceived as a simple decorative element in the background. Thus, neither the figurative element of the sign applied for nor the stylisation of the word ‘extra’ will divert consumers’ attention away from the clear message conveyed by the word. The mark applied for, as a whole, will therefore be perceived as a simple promotional message and not as an indication of the commercial origin of the goods at issue.”

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In Case R 753/2015-1 Simplepay Pty Ltd, on 24 September 2015 the First Board of Appeal held that the SimplePay logo was not eligible for registration under Article 7(1)(b) and (c) CTMR in relation to financial services. The Board held that the mark “immediately conveys obvious and direct information for the relevant English-speaking professional public and average consumers”. The Board also held that the logo was devoid of distinctive character and that “none of the individual figurative elements…..are at all fanciful or striking enough to render the mark distinctive.”

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In Case R 554/2015-4, Lidl Stiftung & Co. KG, on 12 August 2015 the Fourth Board of Appeal refused to register the Simply Sumptuous device for foodstuffs on the basis it was in breach of Article 7(1)(b) and (c) CTMR and that the “The graphical design contributes absolutely nothing to the distinctive character.”

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In Case R 870/2015-4, EHI Retail Institute GmbH, on 10 August 2015, the Fourth Board of Appeal rejected the SELF-CHECKOUT logo for various services including retail services on the grounds it was in breach of Article 7(1)(b) and (c) CTMR logo, stating that “the figurative elements merely reinforce the descriptive meaning of the word ‘SELF-CHECKOUT’” and that “these figurative elements do not, therefore, constitute a distinctive variation of the purely descriptive word element.”

A descriptive sign can no longer be disguised as a legitimate trade mark by adding a graphical embellishment. The above decisions of the General Court and the Board of Appeal illustrate how important it is that companies, when devising new Trade Marks, ensure such marks are not only original but that they also indicate the origin of the goods and services concerned. Otherwise they run the risk of creating a brand name that can’t be trade-marked, leaving their brand vulnerable to attack.

On 02 October, 2015, the Intellectual Property offices of the European Trade Mark and Design Network issued a communication regarding the Convergence Programme. They have now agreed on a Common Practice as to when a figurative mark, containing only descriptive/non-distinctive words should pass the absolute grounds examination on the basis that the figurative element gives the mark sufficient distinctive character.

The communication contains a useful summary of what will be acceptable and what will not be acceptable to intellectual property offices (including OHIM) implementing the Common Practice.

It is hoped that with the introduction of the Common Practice, the 25 trade mark offices (including OHIM) will engage in a clearer, more consistent and harmonized approach in deciding whether the figurative element of a mark is enough to render it non-descriptive and thus acceptable for registration.

The Common Practice is due to be implemented in early January 2016. A copy of the full communication discussed above can be read here:

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/461209/Common_practice_of_distinctiveness.pdf