In order for a mark to be registered as a Community Trade Mark (“CTM”) it must be inherently distinctive. Signs which are regarded as devoid of distinctive character are incapable of performing the essential function of a trade mark, namely to identify the commercial origin of the goods and services. In February 2013, Mo Industries LLC applied to register the following figurative mark as a CTM:
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The mark covered goods in Classes 18 and 25, notably backpacks, handbags, briefcases and belts. In June 2013, the Examiner at the Office for Harmonization in the Internal Market (“OHIM”) refused the registration of the mark on the basis, inter alia, that it was descriptive and devoid of distinctive character pursuant to Article 7(1)(b) and (c) of Regulation No. 207/2009. The appeal was dismissed by the First Board of Appeal of OHIM in January 2014. In its judgment delivered May 2015, The European General Court agreed and expanded upon all of the findings of the Board of Appeal, upholding its decision to refuse registration of the mark. The General Court confirmed the following:
- The goods concerned are aimed at the general public and as the mark consists of a term which is clearly defined in English, its distinctiveness must be assessed with respect to the English-speaking public in the European Union.
- The figurative mark consists of the word ‘splendid’ which is clearly defined in English as ‘grand’, ‘spectacular’, or ‘superb’. Thus, the use of the word ‘splendid’ in the context of goods in Class 18 and 25 will be perceived immediately by the relevant public as a laudatory reference to their aesthetic quality and not as an indicator of commercial origin. The Applicant argued that the typeface, which emulates handwriting, is unique and not decipherable at first glance, thereby diverting the consumer’s attention from the clear message conveyed by the term ‘splendid’. The General Court rejected the Applicant’s argument, stating that cursive script is an ordinary and traditional style which is used by both children and adults and is largely unremarkable from the perspective of any consumer.
- The mark is devoid of distinctive character for the goods concerned. The Applicant argued that the mark is distinctive due to the fact that a figurative element, which is a registered CTM, replaces the dot over the ‘i’. The General Court upheld the Board of Appeal’s conclusion that such does not confer a distinctive character on the mark as a whole.
- The Applicant failed to demonstrate that the mark had acquired a distinctive character through use.
- The General Court rejected the alleged infringement of the principles of equal treatment and sound administration. The Applicant claims that the mark has not received the same treatment as two CTMs of which it is already the proprietor for goods in Class 25 which contain the word ‘splendid.’ The General Court concluded that the fact that the goods covered by the earlier CTMs invoked by the Applicant are closely linked to those covered by the Mark applied for cannot have the effect of authorising, in the present case, the registration of the latter.xx
It is clear from the above decision of the European General Court that the test for inherent distinctiveness of a mark is assessed strictly and on the merits of each individual case, with particular emphasis on the goods covered by the application.