• United States Seafoods sought to register the mark UNITED STATES SEAFOODS (with US flag and Alaska map device)
  • The Board of Appeal found that the mark was descriptive, as the relevant public would perceive it as referring to food obtained from the sea coming from the United States
  • The General Court confirmed, holding that the shape of the map would be perceived as mere decoration which would not change the meaning of the descriptive message of the sign

In United States Seafoods LLC v European Union Intellectual Property Office (EUIPO) (Case T‑10/19), the General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that the mark UNITED STATES SEAFOODS (with US flag and Alaska map device) was descriptive.

Background

The dispute arose in 2017 when the applicant, United States Seafoods, sought to designate the European Union for the following international registration, which covered “fish; fish fillets” in Class 29:

The EUIPO examiner refused protection of the sign in its entirety, finding it both descriptive and devoid of distinctiveness. United States Seafoods appealed, but the Fifth Board of Appeal of the EUIPO confirmed the decision (Case R 817/2018-5). The board held that the sign in question was immediately and directly descriptive of the nature and the geographical origin of the goods, since the sign would be perceived by the relevant public as referring to seafood products coming from the United States. The board reasoned that the graphic elements - namely, a shape resembling a border on a map and part of the flag of United States - did not add any distinctiveness to the descriptive meaning of the dominant verbal element, ‘United States seafoods’.

United States Seafoods appealed further to the General Court, claiming the board had wrongly found that the sign was descriptive within the meaning of Article 7(1)(c) and lacked distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. United States Seafoods argued that the figurative elements of the sign were such as to give that sign a unique and, therefore, distinctive character. Further, United States Seafoods argued that:

  • the Board of Appeal should have considered the overall impression of the sign for the relevant public, instead of merely examining the different figurative elements of the sign separately;
  • the Board of Appeal had wrongly considered that the figurative elements of the sign were descriptive in the sense that the relevant public would perceive those elements as the flag of the United States, rather than only an element of the flag; and
  • the Board of Appeal had wrongly considered that the sign was descriptive as a whole.

General Court decision

The General Court confirmed the decision of the Board of Appeal and dismissed the appeal in its entirety.

First, the court held that the Board of Appeal had rightly found that the relevant public would perceive the word element of the sign as referring to food obtained from the sea and coming from the United States, thus making the sign descriptive. The court confirmed the board’s view that the goods in respect of which protection was sought targeted the general public, and that the relevant public for the purposes of determining whether the sign was eligible for protection was the English-speaking public in the European Union.

Second, the court held that the board was correct to view the sign essentially as an imitation of the flag of the United States, since it reproduced the essential elements of that flag. The court admitted that the sign did possess some differentiating elements; however, they were so minor that the sign would still lead the relevant public to see the sign as the flag of the United States. It also specified that the shape of the map would not be recognised as the State of Alaska but, rather, as mere decoration which would not change the meaning of the descriptive message of the remaining elements of the sign.

Finally, in respect of the last plea, the court merely stated that there was no need to assess the lack of distinctive character for the purposes of Article 7(1)(b), since it is sufficient that one of the absolute grounds for refusal applies. 

Comment

This case confirms the absurdly high distinctiveness threshold for figurative marks within the EU trademark system. It also shows that the EU trademark desperately needs a disclaimer function in order to find its place as a major trademark registry. The essence of the decision is that the mark applied for must be available for all traders despite the fact that, in the applicant’s home country of the United States, the applicant has an exclusive right to the sign - albeit with the relevant disclaimers. Consequently, the decision is giving the applicant’s US competitors a better position in the European Union than they have in the United States.

Peter Gustav Olson

NJORD

 This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe