In 2012, Real Foods Pty registered the sign CORN THINS as a Community trade mark (now known as an EU trade mark). The mark is used in respect of healthy crispbreads. The use of the term “thins” in this context is not unknown, Ryvita Thins being another example.
The validity of the mark was subsequently challenged by Rude Health Foods Ltd which contended that the mark was devoid of distinctive character and descriptive under Article 7 of the Community Trade Mark Regulation (now the EU Trade Mark Regulation) . Rude Health Foods argued that the CORN THINS mark describes “crispbread slices predominantly of corn”, was incapable of distinguishing Real Foods’ products from those of another manufacturer and was therefore not registrable as a trade mark.
The Cancellation Division disagreed with Rude Health Foods, finding that the word “thins” was actually the third person conjugation of the verb “to thin”, so that CORN THINS was actually a play on words, meaning corn that makes one thin.
Rude Health Foods appealed – successfully – to the Board of Appeal. The Board of Appeal found that “CORN THINS” was indeed descriptive of the goods. The Board of Appeal considered it self-evident that the average English-speaking consumer would immediately perceive the word “THINS” as meaning slices (of crispbread) that were thin. In the words of the Board of Appeal, the term “THINS” clearly “describes the product at hand, regardless of the fact that the word may be newly coined and is not present in the English dictionaries”. It added that combining two descriptive terms into one did not make that one term any less descriptive.
It appears that Real Foods focused most of its argument on demonstrating that the term “THINS” was not descriptive, and not so much on showing that the mark had acquired distinctiveness through use, its submissions on that score being given short shrift by the Board of Appeal.
The case highlights the pitfalls of trying to protect a brand name that describes – or, more precisely, as the Board of Appeal made clear – could describe the product that it seeks to promote.