By decision issued on February 10, 2015, the EU Court ruled that the word mark “NANO” for goods claimed in class 9 (robots and ancillary products, computer programs and kits for constructing humanoid robots) and 28 (Toy robots and ancillary products) is to be deemed descriptive of the goods for which protection is sought and therefore invalid.
Back in 2010 the American company Innovation First, Inc., filed an application for registration of a Community trademark at the OHIM for the word sign “NANO”, for goods covered in class 9 and 28. On June 22, 2012, the examiner of the OHIM rejected the application insofar it covered the goods above indicated and therefore, in its opinion, the mark would be perceived by the relevant public as indicative either of their small size, or of the fact they were based on nanotechnology, and consequently descriptive within the meaning of Art. 7(1)(c) of Regulation n. 207/2009 and devoid of any distinctive character according to Art. Art. 7(1)(b) of Regulation n. 207/2009.
Innovation First appealed the decision of the examiner before the First Board of Appeal, which dismissed the appeal on the grounds that:
- the relevant public is composed of average consumers and professionals who handle information technology and speak the main languages of the EU;
- the trademark applied means extremely small or involving the use of nanotechnology, notwithstanding the use of the word at issue sometimes as a prefix;
- the term “nano” is not unusual in relation to the good claimed in class 9 and 28 for which protection was sought;
- in light of the above, the trademark applied for is descriptive of the characteristics and devoid of any distinctive character.
The applicant therefore filed an appeal before the EU Court requesting the annulment of the First Board of Appeal’s decision on the grounds, inter alia, that said decision was based on speculation (insofar as the word “nano” is associated with the “idea of small unit”, and in consideration that is used mainly in the pharmaceutical and biotechnological field) and it infringes art. Art. 7(1)(c) and Art. 7(1)(b) of Regulation 2007/2009.
The EU Court dismissed all pleas in law brought by Innovation First and specifically ruled that “Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought may be freely used by all”, and therefore it prevents such signs and indications from being reserved to one undertaking alone. It follows, according to the Court’s ruling, that “for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics”.
Consequently, the descriptive character of a trademark must be assessed, on one hand, in relation to the goods and services in respect of which registration is applied for and, on the other, in relation to the perception of it by the relevant public, composed of the consumers of those goods or services.
The above assessment may also be carried out on facts arising from practical experience generally acquired of the marketing of goods. Particularly, it was assessed that nanotechnology can be used not only in biotech and pharmaceutics, but also in various fields of electronics, computing and engineering, which are relevant to the design and manufacture of the goods claimed in class 9 and 28 for which protection was sought by Innovation First.
Therefore, the EU Court ruled that the trademark applied for may designate a characteristic of the goods claimed in classes 9 an 28 above, which entails that it is descriptive of those goods, within the meaning of Article 7(1)(c) of Regulation 207/2009.