In ERNI Electronics GmbH v OHIM T-132/08 11 June 2009 (unreported) the Court of First Instance (CFI) upheld a decision of the Fourth Board of Appeal of the Office of Harmonization for the Internal Market (OHIM)l that the word mark MAXIBRIDGE could not be registered as a trade mark for electrical connectors, on the basis that the mark was descriptive and lacked distinctive character.

BACKGROUND

ERNI Electronics GmbH applied to register as a Community trade mark (CTM) the word sign MAXIBRIDGE for “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity” in Class 9 and “rubber insulating materials for power lines, electric switches and connectors” in Class 17.

The OHIM examiner rejected the application on the basis that the mark was descriptive under Article 7(1)(c) of the Community Trade Mark Regulation (40/94/EC) and lacked distinctive character under Article 7(1)(b). OHIM’s Fourth Board of Appeal upheld that decision. ERNI Electronics appealed to the CFI.

DECISION

The CFI explained that to be judged descriptive, a trade mark needed to have a sufficiently direct and concrete link with the goods applied for. When considering the descriptive character of a mark made up of a combination of words, as well as considering these elements, it would be necessary to have regard to the impact of the mark as a whole on the relevant public. In this case, the relevant public consisted of specialists in electrical and electronic equipment as well as average consumers who had at least a basic knowledge of such products.

More specifically, following Citicorp v OHIM [2005] T 320/03 ERC II-3411, the CFI decided that, bearing in mind that the mark contained two English words, the relevant public would be English speaking, or people with at least a sufficient knowledge of the English language so as to understand the relevant words.

The CFI also stressed the fact that a mark would be rejected if, in at least in one of its potential meanings, it described one of the product’s characteristics. Accordingly, the CFI concluded that the term “bridge” was descriptive of one characteristic of the relevant products and the second word, “maxi”, only served to embellish that first word by suggesting its importance.

Dismissing as irrelevant the further argument that the mark had already been successfully registered in the United States, the CFI reiterated that the Community trade mark regime was selfcontained, independent and designed for the purposes of a specific legal order (see Messe Munchen v OHIM (electronica) [2000] T-32/00 ERC II-3829).

COMMENT

Once more we have a mark for technical goods failing on the basis of descriptiveness. The application was up against a relevant public that is not only tech-savvy, but whose language would be sufficiently technical to encompass a term common in the industry and not only expressed in one of the main Community languages (“bridge”) but in translation standard in other main Community languages (the French term “ponter”, for example).