The mere fact that computers may be used in a field of application designated by the trademark is not as such sufficient to conclude that the trademark relates specifically and directly to the intended purpose of the computer, i.e. is descriptive (cf. General Court of the European Union (GCEU), judgement of September 20, 2019, T-650/18 Reaktor Group v. EUIPO [“REAKTOR”]).

In the case at hand, the applicant sought trade mark registration for the word mark “”REAKTOR” for, inter alia, “computers, being notebook computers, manual computers, personal computers, computers for satellites” in class 9. The EUIPO rejected the application in accordance with Article 7 (1) (b) and (c) of Regulation No. 2017/1001 (European Union Trademark Regulation, EUTMR). It took the view that the sign “REAKTOR” would directly indicate that the computers were designed and intended for reactors and for the use of reactors.

The General Court rejected this argumentation. It stated that no sufficiently direct and concrete link between the sign and the covered goods would be established by the trademark. Computers could nowadays be practically used in every economic or social field. According to the General Court, the mere fact that they can be used in a functional context involving a nuclear or other reactor is not sufficient to conclude that the word "REAKTOR" refers concretely and directly to the computers’ intended purpose. The Panel clarified that such a use would constitute, at most, one of the multiple fields of application but not a technical functionality.

The General Court also held that even if it were to be assumed that the trade mark could be regarded as being descriptive, the EUIPO failed to prove that a relevant part of the public would immediately and without any further reflection perceive the trademark as description of an easily recognizable property.

Practical Impact:

This decision deviates from the normally restrictive rulings of the General Court. Even if it remains quite vague what “technical functionality” means exactly, it becomes clear that the products’ use in the field designated by the trade mark must have an effect on the technical properties of the product on an abstract level. This shows certain parallels to the “vita” judgment (GCEU, judgment of May 7, 2019, T-423/18 Fissler v. EUIPO [“vita”]) (https://www.lexology.com/library/detail.aspx?g=50ba9a6e-9831-487b-ac06-8786d291228a), which clarified that a sign associated with a purely random and incidental aspect which only some of the goods may have, is insufficient to reject the trade mark application under Article 7 (1) (b) (c) EUTMR.

The case at hand is also interesting because the principle set out in the judgement could be applied, by way of analogy, to other oft-covered goods such as smartphones, software and robots.

The argument that the mere possibility of a use as a descriptive indication is sufficient can be countered by the objection that no substantial part of the relevant public will understand the sign as descriptive.