ECJ puts the finger on PURE DIGITAL's problem
For those who love recent history, Case C-542/07 P Imagination Technologies Ltd v Office for Harmonisation in the Internal Market is a Community trade mark appeal which the Court of Justice of the European Communities heard way back on 11 June but which has hitherto escaped the vigilant Kats.Imagination applied to register as a Community trade mark the word sign PURE DIGITAL for goods and services in classes 9 and 38 (electric and electronic apparatus for use with multi-media entertaining systems and telecommunication of information, etc). The examiner refused the application on the ground that the mark was descriptive and devoid of either inherent or acquired distinctive character. The Second Board of Appeal dismissed Imagination's appeal, as did the Court of First Instance. Imagination then appealed to the Court of Justice, maintaining that the Court of First Instance had wrongly taken the view that the distinctive character of a trade mark for which registration had been sought must be acquired before the date of filing of the application.
The ECJ dismissed the appeal and explained as follows:
* Distinctive character, if not inherent, had to be acquired through use of the trade mark before the date of application for registration. This was apparent from the very wording of Article 7(3) of the Community Trade Mark Regulation, particularly from the use of the verbs in the past tense in the phrases 'the mark has become' and 'in consequence of the use which has been made of it': the mark must already have acquired distinctive character through prior use by the time of filing of the application.* It was the intention of the Community legislature to grant protection as a Community trade mark only to those marks whose distinctive character had been acquired through use before the date of application and the literal interpretation of Article 7(3) was the only one which was compatible with the logic of the system of absolute and relative grounds for refusal.
* If the contrary were correct, that would lead to the unacceptable proposition that, in opposition proceedings based on an earlier mark which had not yet acquired distinctive character, the opposition would succeed where the second mark already had distinctive character at its time of filing while the first had not yet acquired it through use.
The IPKat thinks this is right and that the final point is the real clincher. Merpel agrees and says, how refreshingly pleasant it is to see a court these days which has a kind word for any sort of literal interpretation: I'd almost forgotten that words come with meanings and are not all wrapped in meta-text. Tufty, not wanting to be left out, adds that the words 'pure digital' are likely to run into relative grounds oppositions even if there are no problems with absolute grounds such as decriptiveness and lack of distinctive character, if you look at the logos decorating this post.Pure digital products here
