This case revolves around the trade mark RESCUE used for herbal products by Bach Flower Remedies (“Bach”).
Bach obtained an EU trade mark registration for RESCUE, covering goods in Classes 3 (toiletries, cosmetics), 5 (pharmaceutical/medicinal products), and 30 to 32 (herbal and other beverages). A Danish company called Durapharma filed an application for to declare the registration invalid on the basis that the word is descriptive of the characteristics of the products in question (contrary to Art. 7(1)(c) of the EU trade mark Regulation).
Bach argued that the term RESCUE is not descriptive of the products; and that, even if they were wrong on this, their mark had acquired distinctiveness because of the extensive use they had made of it. Bach filed evidence of their use of RESCUE in the UK.
The Cancellation Division decided in Durapharma’s favour and declared the RESCUE registration invalid on the basis of descriptiveness. The Board of Appeal upheld that decision; and, on further appeal, the case came before the General Court.
Bach’s argument was that the word “rescue” in everyday language means only “to save” (i.e. to come to someone’s rescue) and not “to heal” or “a cure”; and that this “save” meaning was not directly descriptive of the characteristics of its products, being at most merely an allusion.
The General Court, however, followed the reasoning of the Cancellation Division and found that the word “rescue” means not only being saved but also providing relief or aid in a wider sense. English-speaking consumers would therefore naturally understand that products bearing the word RESCUE would help them return to a good condition or state of health. The Court took into account the definition of “rescue” in the Oxford English Dictionary and also that a “rescue drug” or “rescue medication” is a term used for a drug or medication which treats an acute episode or condition.
Looking in turn at the classes of products covered by Bach’s registration:
- Cosmetics can perform the functions of protecting, relieving or repairing the body (and therefore providing relief or aid)
- Different types of drinks may provide relief or aid by, for example, replenishing energy or salt or soothing sore throats
- Most obviously of all, medicinal products all have remedial properties.
No surprise that the General Court then found against Bach on the grounds of descriptive meaning. This is perhaps a slightly harsh outcome, except in relation to pharmaceutical/medicinal products. A “rescue cosmetic” or “rescue drink”?
Bach’s second line of defence, namely that the RESCUE mark had acquired distinctiveness, also failed. This was not because the evidence of use was not persuasive, but because it was limited to use in the UK. English-speaking consumers are not limited to people living in the UK. Following well-established case law, English speakers are people from EU countries where English is an official language- Ireland and Malta as well as the UK- and also where knowledge of English is widespread, i.e. Cyprus, Denmark, Finland, the Netherlands and Sweden. A useful reminder of the extent of evidence needed when it comes to proving acquired distinctiveness (and, of course, that scope expands to the whole of the EU when the mark is, for example, a shape).