In Imperial Chemical Industries (ICI) v OHIM, the Court of First Instance (CFI) upheld the refusal by the Office for Harmonization in the Internal Market (OHIM) of ICI’s Community Trade Mark (CTM) application for LIGHT & SPACE in respect of paint and related products, on the basis that it is devoid of any distinctive character. The CFI considered that the public would perceive the mark to be an advertising slogan, drawing attention to the characteristics of ICI’s products, rather than as an indication of origin.
On appeal to the CFI, ICI raised five objections to the Board of Appeal’s refusal of the mark. The ICI said the Board of Appeal was wrong:
- To consider that the public would perceive the mark as a slogan. In order to operate as a slogan, additional words would be needed to suggest concepts such as “reflection” or “refraction” of light, “interior” space and “comfort”, ICI suggested that the Board of Appeal had considered the mark as “Space by Light” rather than “Space & Light”, which, it argued, were unrelated words, lacking the grammar and syntax of a slogan;
- In failing to consider whether the mark could act as an indication of origin, regardless of its promotional meaning.
- In not giving due consideration to all of the elements of the mark, and although “Light” could be descriptive of paint, “Space” could not.
- In stating that a mark must be “unusual” or “out of the ordinary” in order to be deemed distinctive.
- In failing to assess whether the mark had distinctive character in respect of all of the goods for which the application was made, as paints, lacquers, varnishes, and preservatives have very different properties. Thus the mark might be distinctive for some, if not all of the goods in question.
The CFI upheld the Board of Appeal’s decision that the mark has no distinctive character. It is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the goods or service which, whilst not specific, represents promotional or advertising information. The relevant public will perceive the mark first and foremost as such, rather than as an indication of the commercial origin of the goods or service.
Rejecting all five of ICI’s objections to the Board of Appeal’s decision, the CFI held that:
- The Board of Appeal had done no more than attempt to define the relationship between “light” and “space” in the minds of consumers. No additional words were needed in order for the public to understand this as a promotional message.
- The Board had considered the mark to convey specific information regarding the characteristics of the relevant goods. In the absence of distinctive elements, the Board of Appeal therefore considered the mark descriptive and lacking in distinctive character.
- Although the word “space” was not descriptive of the goods in question, when taken as a whole, the mark emphasised the relationship between “light” and “space” and would be perceived as a laudatory message.
- It was not the fact that there was nothing unusual or out of the ordinary about the mark which had led the Board of Appeal to conclude that it was devoid of distinctive character. It was the fact that the sign, by drawing attention to the characteristics of the goods to which it was applied, acted as an incitement to purchase.
- Although the range of relevant goods had different properties, they were all related to paints and all were capable of containing colour and reflecting light. The CFI held that the Board of Appeal was not wrong to conclude that the public would perceive the mark as a promotional message and not an indication of origin in respect of all of the goods covered by the application.
The CFI noted that a slogan can only be registered if it can also be perceived as an indication of origin enabling consumers immediately to distinguish the goods or services under that mark from those of others.