Amazon Technologies, Inc. was recently dealt a blow by the General Court of the European Union when it affirmed the decision of the Board of Appeal upholding the EUIPO examiner’s refusal to register Amazon’s figurative mark The RING mark is already in use on home-security systems made by Amazon, which generally include a doorbell, that use motion-detecting cameras. Nevertheless, the EUIPO examiner refused the application for registration in respect of class 9 goods—a prerequisite for EUIPO registration. The examiner, however, found that the mark was “descriptive” since it simply described the functionality of the goods in question—namely, that the doorbells and other goods make a sound, i.e., they ring—which prevented the mark from being registered.
Amazon challenged the examiner’s decision on appeal, but the Board of Appeal of the EUIPO agreed with the examiner. And when Amazon challenged that decision in the General Court, Amazon lost again.
The Board of Appeal held that the goods in question including “consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes” , ruling that “ring” was devoid of any “distinctive character” had a clearly specified purpose, namely, monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance. And it held that the relevant public would perceive the RING mark as an indication that all the goods in question include an alarm system producing, in particular, “a clear resonant or vibrating sound.” As a result, the Board of Appeal concluded that the RING mark merely described the functionality of the goods in question, which is an absolute ground to refuse registration (an absolute ground for refusing registration, such as a finding of descriptiveness, is sufficient by itself to prevent the mark from being registered at the EUIPO).
In its complaint to the General Court, Amazon argued that the RING mark was not descriptive in relation to the goods in question and asked the court to overturn the Board of Appeal’s decision. Instead, Amazon argued, the RING mark is merely suggestive or allusive. None of the goods in question, Amazon asserted, “has the purpose or functional characteristic of producing a clear resonant or vibrating sound” (the dictionary definition of “ring”). Therefore, Amazon contended, the RING mark, when linked to the doorbells and other goods being sold, is perceived by consumers as a “ring doorbell”—and not as being descriptive.
As the General Court recognized, settled case law provides that marks that merely describe the characteristics of goods or services are not available for registrable given that descriptions should be free for anybody to use. Further, the Court recognized, marks that serve only to designate the characteristics of the goods or services in question fail to perform the essential function of a trademark—namely, identifying the origin of the goods or services, which enables the consumers of the goods or service to “repeat the purchasing experience, if it proves to be positive, or to avoid it, if it proves to be negative.”
The General Court confirmed that, to find a mark descriptive in the EU, the law requires that there must be “a sufficiently direct and specific relationship” between the mark applied for and the goods and services in question such that the public perceives—“immediately” and “without further thought”—“a description of the goods and services or one of their characteristics.” Indeed, in buttressing this point, the General Court added that in using the word “characteristic” in the law, the legislature highlighted the fact that the mark must be “easily recognizable by” relevant consumers as describing a “property” of the goods or the services for which registration is sought. And as applied to the circumstances of the case, the General Court held that the Board correctly found that this was precisely the situation regarding the RING mark. The Court said:
[T]he Board of Appeal correct[ly] stated that the verbal element “ring”, which means in particular to “make a clear resonant or vibrating sound”, immediately informed the consumers, without their further thought, that the goods in question, “doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras”, include a system to enable them to produce a clear resonant or vibrating sound.
The General Court thus rejected Amazon’s assertion that the RING mark was only suggestive or allusive, and found instead that it was “descriptive of the intended purpose of the goods in question, whose function is to allow the monitoring of the interior and exterior of homes, retail stores, or offices for security and surveillance” Accordingly, the Court dismissed Amazon’s complaint “as unfounded.”
This case serves as a reminder of the EUIPO’s strict approach to absolute grounds of refusal, including non-distinctiveness and descriptiveness. Trademark owners should heed this lesson and avoid creating marks that may cause consumers “immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics,” since they may be deemed unregistrable in the EU.
Case T‑270/19: Amazon Technologies, Inc. v European Union Intellectual Property Office (Ring), Judgment of the General Court (Ninth Chamber) of 19 December 2019.