Distinctiveness

The Court of First Instance of the European Communities recently had to look at whether the word mark “FUN” for automobiles is sufficiently distinctive to be protectable. In its decision of Dec. 2, 2008 (T-67/07), the Court decided against the Board of Appeals of OHIM. The Board of Appeals took the view that the relevant consumers understand the word “fun” in connection with an automobile as an indication of a particular design. According to the Board of Appeals the term described a particular class of automobiles which are fun to drive. Furthermore, the term was used by automobile retailers to describe a category of cars and was a simple term which had to be used by others as well. The Court of First Instance disagreed. According to the Court the term “fun” is only meant to convey a positive image upon the cars. The judges found that a relation between the term “fun” and a particular fun in driving was too vague to claim that the term was merely descriptive. Consumers would not view the term as a description of a particular type of automobile, but an indication of origin from the manufacturer.  

Risk of Confusion

In its decision of Dec. 2, 2008 (T-212/07), the Court of First Instance had to decide whether there is a risk of confusion between the Community trademarks “Bececkerer Onlinenlinenlinenlinenline Proro” and “Beckerer” on the one hand and the Community trademark application “Barbara Becker” on the other. This application was filed by the former wife of Boris Becker for identical goods for which the more senior Community trademarks were registered. The Court of First Instance found that the marks are sufficiently similar. The term “Becker” was decisive. If a combination mark consists of one element combined with a more senior trademark of a third party, the latter could lead to a risk of confusion even if it did not constitute the dominating part of the combined mark. The more senior mark “Beckerer” and the mark “Barbara Becker” both contain the identical family name “Becker”. As a consequence they were considered to be sufficiently similar particularly given the fact that in a part of the European Community the term “Becker” will be recognized as family name and will thus have more weight in the combined mark than the first name “Barbara”. The fact that Barbara Becker is a famous person in Germany did not change the analysis according to the Court.

The wine and liquor manufacturer Miguel Torres S.A. which owns several word marks and device marks with the word “Torres” filed oppositions against various word mark and device mark applications containing the word “Torre”, namely “Torre Albéniz”, “TG Torre”, “Torre de Frías” and “Torre de Benitez”. In all of these cases the oppositions by Miguel Torres S.A. were rejected due to a lack of risk of confusion. In the case of the device mark “Torre Albéniz” the Plaintiff stated that the distinctiveness of its trademark was based particularly on the dominated part “torre”. In its decisions of Dec. 18, 2008 (T-287/06, T-285/06, T-08/07 and T-16/07), the Court found, however, that even considering the fact that “torre” was the initial part of some of the more junior applications this word did not dominate the respective mark in a relevant way. Rather, the remaining parts gave the marks their individual character and dominated them. Therefore consumers who were able to understand the meaning of the marks the difference was apparent, for others a remaining similarity was irrelevant.  

Sufficient Use in Commerce

In two recent decisions the European Court of Justice had to deal with issues relating to sufficient use in commerce of a mark to continue to be able to enforce it. The Austrian Association Verein Radetzky-Orden had applied for cancellation of the trademark “Feldmarschall Radetzky” for lack of sufficient use. The competent Austrian Court had referred the question of sufficient use to the European Court of Justice. The European Court of Justice decided in its decision of Dec. 9, 2008 (C-442/07) that a mark is being sufficiently used in commerce if a non-profit association uses it in public to announce events, as well as on letterhead and in advertising and if the mark is used by the members of the association when they undertake fundraising activities and make contributions to those in need while wearing pins showing the mark. A commercial use of the mark was not found to be required.

A different aspect of sufficient use of a mark was dealt with in the decision of Jan. 15, 2009 (C-495/07). The Company Maselli-Strickmode GmbH used its word mark “WELLNESS” for non-alcoholic beverages given to customers as an add-on in the distribution of clothing while beverages sold separately did not have this mark. The European Court of Justice decided that this practice could not be qualified as sufficient use. There could be no continued trademark protection if the mark lost its commercial relevance. According to the Court the goods under the mark “WELLNESS” were not distributed with the aim to enter the market of goods belonging to the same class of goods for which the mark was registered. Under these circumstances, according to the Court, applying the mark will neither serve to create a market for distribution of these goods nor to help distinguish the relevant goods from those of other undertakings for the benefit of consumers.

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