Not so long ago, one could simply add a flourish to an entirely descriptive word in order to achieve registration without an objection based on absolute grounds.

Well, it looks like we can confidently say that those days are long gone, at least insofar as OHIM’s Board of Appeal is concerned.

A look over April and May’s decisions relating to Community Trade Marks indicates a fierce determination on the BOA to reject such marks.

This in itself is not surprising, but what is perhaps controversial is the provision under which the BOA is rejecting these marks. In the cases below, the BOA relied on article 7(1)(c) of the CTM Regulation, which prohibits the registration of “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”.

  • In Case R 1685/2013-5 Schuh Limited (15 May 2014), the 5th Board of Appeal rejected the Kids Schuh logo below under article 7(1)(c) CTMR. The sign is “a purely descriptive indication”; the graphic element is “likely to be overlooked by the relevant consumers

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  • In Case R 1801/2013-5 Internet Employment Linkage, Inc (14 May 2014), the 5th Board of Appeal rejected the HigherEdJobs logo below under article 7(1)(c) CTMR. The figurative element “would not be given significant weight by the relevant public

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  • In Case R 1801/2013-5 Internet Employment Linkage, Inc (14 May 2014), the 5th Board of Appeal rejected the iSnaps logo below under 7(1)(c) CTMR. The figurative element “would not be given significant weight by the relevant public”.

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  • In Case R 2372/2013-2 Oraldent Limited (30 April 2014), the 2ndBoard of Appeal rejected the TOTAL DEFENSE logo below under 7(1)(c) CTMR. The figurative element “only serves as a suitable frame in order to highlight the word elements and does not detract from the descriptiveness of the expression as such. To the contrary, it emphasises and reinforces the descriptive notion

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These can be added to “the usual” UK cases and earlier General Court decisions that have rejected stylised but descriptive marks, including those listed below (that were summarized in Arnold J’s decision in Starbucks, also discussed below). However, the marks lissted below were rejected under the seemingly more obvious provision, namely article 7(1)(b) of the CTM Regulation (and its equivalent in the UK, namely section 3(1)(b)), which prevent the registration of marks that are “devoid of any distinctive character” (for completeness, each of the marks listed above was also rejected under article 7(1)(b)).

  • In QUICK WASH ACTION Trade Mark (BL O/205/04, 30 April 2004) the QUICK WASH ACTION device below was rejected under section 3(1)(b) UK Act

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  • In Case C-37/03 P BioID v OHIM [2005] ECR I-7975 the BioID. logo below was rejected under 7(1)(b) CTMR.

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  • In SUN RIPENED TOBACCO Trade Mark (BL O-200-08, 4 July 2008) the SUN RIPENED TOBACCO device below was rejected under section 3(1)(b) UK Act.

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  • In Case C-92/10 P Media-Saturn-Holding GmbH v OHIM [2011] ECR I-0002 the BESTBUY device was rejected under 7(1)(b) CTMR.

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Comment

In November 2012, Arnold J issued a missive in his decision in Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors [2012] EWHC 3074 (Ch). Arnold J invalidated Starbucks (HK)’s NOW logo shown below, on the basis that it infringed articles 7(1)(b) and (c) of the CTM Regulation.

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Even if the registration was valid, Arnold J held that it would not have been infringed. Arnold J twisted the knife, in the following memorable terms:

“… it appears to me that [Starbucks (HK)] only succeeded in obtaining registration of the CTM because it included figurative elements. Yet PCCW is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place

Perhaps OHIM’s Boards of Appeal have taken Arnold J’s comments to heart!

But all of these decisions have to be placed into context. At the pan-European level at least (as opposed to some national approaches), the decisions are set against the background of a quite formulaic approach to the assessment of the likelihood of confusion, where marks that are registered under the figurative figleaf of distinctiveness are enforced quite broadly (particular in the opposition and invalidity contexts). The move away from allowing registration of such marks in the first place could be seen as a backlash against that practice.

It is worth mentioning that these recent decisions are hard to square with other cases from 2014 in which pure device marks (without verbal elements) have been accepted as being inherently distinctive, including the decision relating to Gamp’s shield device mark, discussed here:

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This all begs the question as to whether these types of marks are really exclusively descriptive or lacking any distinctiveness (and therefore should be rejected), or whether the assessment of the likelihood of confusion needs to be recalibrated.

The final note here relates to the Convergence Programme projects of the European Trade Mark and Design Network. One of the projects (CP3) relates to the treatment of figurative marks under the absolute grounds provisions and it is understood that the European Trade Mark and Design Network hopes to adopt a common practice in November 2014, which may be more lenient to the approach that currently seems to be taken by the Board of Appeal.