ECJ says yes -- but no to Eurohypo

There was plenty of excitement in Luxembourg yesterday when the Court of Justice of the European Communities gave its ruling in Case C‑304/06 P, Eurohypo AG v Office for Harmonisation in the Internal Market.

Right: your money is safe in this Hippo Bank

Eurohypo applied to register the word EUROHYPO as a Community trade mark for "financial affairs; monetary affairs; real estate affairs; provision of financial services; financing; financial analysis; investment affairs; insurance affairs" (Class 36). The application was rejected under Articles 7(1)(b) and (c) and Article 7(2) of Regulation 40/94 (lack of distinctiveness; descriptiveness - in part of the Community). The Board of Appeal partially upheld Eurohypo's appeal and annulled the examiner’s decision as regards ‘financial analysis; investment affairs; insurance affairs’. The appeal was however, dismissed as regards ‘financial affairs; monetary affairs; real estate affairs; provision of financial affairs; provision of financial services; financing’. The Board considered that, in essence, the components EURO and HYPO contained a clearly understandable indication of the characteristics of those five services and that their combination did not render the mark less descriptive, at least in German-speaking countries.

Eurohypo appealed unsuccessfully to the Court of First Instance (CFI), which dismissed the appeal in its entirety. The CFI didn't think that the combination of EURO and HYPO was any more distinctive than the words by themselves:

"... the word sign EUROHYPO is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. The applicant has not shown that that compound word had become part of everyday language and had acquired a meaning of its own".

In other words, this was not a BABY-DRY syntactically unusual juxtaposition (C‑474/01 P Procter & Gamble v OHIM [2004] ECR I-5173).

Eurohypo appealed further to the European Court of Justice, which set aside the bit of the CFI's decision that addressed the test of distinctive character of EUROHYPO by reference to its descriptive qualities. According to the ECJ, at paras 54 to 62 of its judgment,

"54 ... while the Court of Justice has had occasion to find a degree of overlap between the respective scope of the absolute grounds for refusal to register a trade mark set out in Article 7(1)(b) to (d) ..., each of the grounds for refusal to register listed in Article 7(1) ... is independent of the others and requires separate examination ...

55 The Court of Justice has also had occasion to make it clear that the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue ...

56 ... the notion of general interest underlying Article 7(1)(b) ... is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin ...

57 In the present case, the reasoning followed by the Court of First Instance is based on an incorrect interpretation of the principles ....

58 ... the Court of First Instance assessed the distinctive character of the mark EUROHYPO by carrying out solely an analysis of its descriptive character within the meaning of Article 7(1)(c) .... Consequently, the judgment under appeal contains no separate examination of the ground for refusal laid down in Article 7(1)(b) ... on the basis of which, however, the Court of First Instance rejected the second plea, raised at first instance, against the contested decision.

59 In so doing, the Court of First Instance assessed the mark EUROHYPO without, in particular, taking into account the public interest which Article 7(1)(b) ... aims specifically to protect, that is, to guarantee the identity of the origin of the designated product or service.

60 Moreover, in the context of such an assessment, the Court of First Instance used an incorrect criterion to determine whether the mark in question could be registered.
61 According to that criterion, a mark composed of descriptive elements could meet the conditions for registration where the word has become a part of everyday language and has acquired a meaning of its own. But, while that criterion is relevant in the context of Article 7(1)(c) ..., it cannot form a basis for the interpretation of Article 7(1)(b).

62 Although that criterion permits excluding the use of a trade mark to describe a product or a service, nevertheless, it does not allow it to be determined whether a mark is capable of guaranteeing the identity of the origin of the designated product or service to the consumer or end user".

But this error by the CFI did not undermine the decision of the Board of Appeal to reject the appeal:

"69 As OHIM correctly stated in the contested decision, the relevant [German-speaking] public, in the field covered by the trade mark application, understand the word sign EUROHYPO as referring, as a whole and in general, to financial services requiring real securities and, in particular, to mortgage loans paid in the currency of the European Economic and Monetary Union. Furthermore, there is no additional element which would allow the view to be reached that the combination, created by the current and usual components EURO and HYPO, is unusual or might have its own meaning which, in the perception of the relevant public, distinguishes the services offered by the appellant from those of a different commercial origin. Therefore, the relevant public perceives the trade mark in question as providing details of the type of services which it designates and not as indicating the origin of those services.

70 It follows that the trade mark for which registration is sought does not have a distinctive character for the purposes of Article 7(1)(b) .... In those circumstances, the appellant’s action against the contested decision must be dismissed".

So, says the IPKat, six years after the application was filed, Eurohypo is no better off than when it started, except that it has been saddled with plenty of costs. Except, says Merpel, for the fact that Eurohypo has been building up distinctiveness aquired through use over all that time - and no-one else would dare try to steal its brand while all this litigation was in progress.

Eurohypo here
Euro hippo here