ARGUMENT GETS A WARM WELCOME FROM OHIM

The IPKat brings to your attention a decision of the OHIM Second Board of Appeal in an application to register the mark WARM WELCOMES for various services. The OHIM examiner refused the application for lack of distinctiveness and applied to the Board. Said the Board:

* English speakers will understand the words ‘warm welcomes’ as a cordial invitation suggesting that the staff will be friendly and will not apply undue pressure on customers. From the trader’s point of view, it draws consumers by reassuring consumers who are unsure about whether to make purchases that they will be treated well, giving traders a strong interest in using those words.

* As a result, the term could not function as a trade mark, and would not be seen as indicating the commercial origin of the goods or services on which it was used. It was the equivalent of ‘welcome to’ or ‘good morning’.

* While the Office may have registered marks containing the term ‘welcome’ before, each case must be judged on its own merits and the legality of decisions must be judged solely on the basis of Regulation 40/94.

The IPKat notes that the Second Board continues to look at the need to keep marks free for other traders to use under the lack of distinctiveness, rather than the descriptiveness, ground. He has a degree of sympathy for this approach, but is pretty sure that it’s not in accordance with the ECJ’s case law.