May a French word mark and German word mark be refused on the grounds of lack of distinctiveness, even though the identical English version of this word mark is capable of protection? The pharmaceutical manufacturer Teva lost in this case concerning the multilingual word mark.
The pharmaceutical manufacturer Teva lost before the European Court (EuG) in this trademark dispute about a word mark for a migraine remedy. The background is quickly told: Pharmaceutical manufacturer Teva Pharmaceutical Industries (Israel) applied for registration of the word mark “Moins de migraine pour vivre mieux” as a European word mark and also the German counterpart to this, “Weniger Migräne. Mehr vom Leben” was also applied for as a European word mark.
However, the European Trademark Office (EUIPO) rejected the desired trademark registrations. The expressions “Weniger Migräne” and “Mehr vom Leben” were not particularly unusual with regard to the rules of German syntax, grammar, phonetics or semantics. The same applies to the French word mark, which also corresponds to the rules of French syntax, grammar and semantics. Thus, these sentences convey to the relevant public a simple, clear and unambiguous message which is not capable of conferring on them any particular originality or resonance, both the EUIPO and the Board of Appeal decided.
Teva appealed against this decision to the European Court (CJEU, T:2020:330 and EU:T:2020:329). In particular, Teva claimed a violation of the principle of equal treatment. Teva referred to the English language version of the word mark “LESS MIGRAINE, MORE MOMENTS”, which had been registered as an EU trademark.
Breach of the principle of equal treatment
But the European Court rejected Teva’s objection. The court pointed out that the CFI/CJEU is not bound by the decision-making practice of the EUIPO in its review of legality. Moreover, for reasons of legal certainty and also for reasons of proper administration, the examination of each trademark application must be strict and comprehensive in order to prevent trademarks from being wrongly registered or declared invalid. Such an examination must therefore be carried out in each individual case, the EuG stressed.
CJEU: Lack of distinctive character of the mark in FR and DE
Accordingly, the court reviewed the EUIPO decision to declare the French and German word marks to be devoid of distinctive character. Although word marks as slogans can convey a more or less objective, even simple, message and still be capable of informing the consumer of the commercial origin of the goods or services concerned, the CJEU explained the established case law. This applies in particular to word signs which have a certain originality or resonance.
In fact, the trade mark applied for could give the relevant public hope that it would dream of an alleviation of its migraine pain. That is evidence of the advertising character of the word signs, but it is not appropriate to indicate the commercial origin of those goods and services. Therefore, the CJEU confirmed the lack of distinctiveness of the word marks in French and German.
EN Version of the multilingual word mark: more unusual
The CJEU stressed that the Board of Appeal had examined with particular care whether, in view of the English language version of the word mark and its status as a protected Union trademark, a decision in the same direction had to be taken for the French and German versions of the word mark. However, the Board of Appeal explicitly stated that the Union trademark LESS MIGRAINE, MORE MOMENTS, relied on by the applicant Teva, differed from the two marks applied for because of its blurred and unusual nature.
Therefore, the CJEU dismissed Teva’s two actions and confirmed the refusal to register the mark as a multilingual word mark in French and German.