Seeing stars: General Court hits OHIM ruling on the head

It's a little while since we last heard from Valentina Torelli, who has graced our weblog with the occasional guest post, so we are pleased to welcome her back with this contribution concerning a ruling earlier this week which may well be right in law but which at least one fictional feline feels is wrong in terms of its factual impact.  But let's not anticipate the tale which Valentina is about to tell us here:

All stars for trade marks

Back from holidays, the time for choosing a pleasant destination and a fabulous accommodation is over and we are once again sinking into our favourite IP issues. Putting those glossy summer catalogues  down, it is worth giving an enlightened glance to the '5 stars logo' and '4 stars logo' trade mark cases, respectively T-686/13 and T-687/13, decided earlier this week by the General Court.

The Court gave rulings in two appeals lodged by the French company Unibail Management against the refusals of the two figurative Community trade mark (CTM) applications represented on the right and below, based on absolute grounds, on Article 7(1)(b) CTM Regulation 207/2009, in that the OHIM's Board of Appeal confirmed the Examination Division's findings of lack of distinctive character. 

The CTM applications covered long lists of more than 130 goods and services in classes 16, 35, 36, 38, 41, 42 and 43, belonging to different commercial sectors including printing, advertising, insurance, finance and real estate, communications, travel and transportation, training, education, entertainment and recreation, architecture, construction, interior design and computer science. The specifications for the two CTM applications were identical.

OHIM held that the two CTM applications could not serve to distinguish Unibail's goods and services from those of other undertakings because the signs simply consisted of four and five stars preceded and followed by a line. Such elements --considered either together and separately -- could not create an catching impression in the relevant public, which is both the average consumer and the professional in the European Union, in respect of the goods and services covered by the CTM applications. Indeed, the two signs were considered to be decorative patterns, not figurative marks: all they could do was to inform the relevant public about the quality, the luxury value and the high prestige of the goods and services in the applied-for classes.  OHIM added that stars are symbols used in different market sectors, and not only for hotel and restaurant services, and that they lack of inherent distinctive character.  Moreover, the absence of distinctiveness with regard to consumer goods was based on practical experience.

In this latter regard, it is worth emphasising that in the contested decisions the Board of Appeal cited Develey ('Plastikflaschenform') T-129/04, paragraph 19,  which stated that

… where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (see, by analogy, Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 29). In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

The Board of Appeal added that it is for the applicant to furnish proof that  the mark applied for has either an intrinsic distinctive character or an acquired distinctiveness through use, given its  knowledge of the market and its better position to provide substantiated information on the matter (Case T-194/01, Unilever, point 48).

The General Court held that the Board of Appeal was obliged to give its reasoning for each product and service when it based its decision on practical experience, while for goods targeted to professionals the Board of Appeal could not rely on practical experience acquired through the marketing of consumer products.  After all, the assessment of the mark's distinctive character must be addressed in relation to the goods and services for which registration of the mark is sought and in relation to the relevant public's perception. It must also be borne in mind that the level of attention of the public varies according to type of goods and services concerned, being lower when they are everyday goods and higher when the public is formed by professionals.  OHIM and Unibail agreed that, in the present case, the relevant public comprised not only general  but also specialized consumers. Equally, Unibail did not specifically challenge the Board of Appeal's conclusions about the distinctiveness of the CTM applications for services in class 43, although they lacked sufficiently stated reasons.

In both cases the General Court ruled in favour of the French applicant, annulling the decisions of the Board of Appeal. In its view, no sufficient specific and direct link was recognizable among all the goods and services for which registration of the marks was sought.  The Court found that the goods and services had different natures, characteristics, destination and marketing methods. Consequently, the absence of homogeneity between such goods and services could not allow an overall reasoning about the lack of distinctive character of the mark for all the goods and services, as presumed first by the Examiner and then by the Board of Appeal.

The Court specified that it was not possible to verify the legality of the appealed decisions as far as they did not set forth the reasons why the marks applied for were not to be considered origin-identifiers for some goods and services (eg prospectuses – class 16;  rental of advertising time on communication media – class 35;  issuance of travellers' checks and letters of credit – class 36 and rental of access time to global computer networks – class 38) and why they were simply informing the relevant public about the quality worth of the marks.

However, the Board of Appeal undertook a specific examination of neither the perception of the signs in relation to their goods and services nor in terms of their classes. According to the Court, the Board of Appeal failed to give the specific assessment required by Article 7(1)(b) of Regulation 207/2009 in regard to the  products and services in classes 16, 35, 36, 38, 41 and 42 and did not sufficiently give reasons for the two contested decisions. Finally the General Court rejected all the case-law mentioned by the OHIM when substantiating its argument because it was neither relevant nor applicable to the present case.

In the end, for the purposes of applying for CTMs, these judgments remind us of the importance of the principle of speciality for distinctiveness purposes in relation to the relevant public and depart from the OHIM's new guidelines about simple figurative elements. The latter lists series of judgements where ' 

simple geometric devices such as circles, lines, rectangles or common pentagons are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark'.

Merpel is still struggling to imagine not jumping to the conclusion that the signs concerned, regardless of the goods or services for which registration was sought, were neither an approbation of four- or five-star quality or mere decoration; she would expect to be well educated to the contrary effect by any business which used such a motif and sought to assert that it served as a trade mark.

Cats under the stars here
Stars with cats here