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Articles
John Lambert Absolute
Grounds of Refusal
John
Lambert The Trade Marks Act 1994
John Lambert Community
Trade Marks
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Important
John Lambert
12 July 2000
This
case note originally appeared on the Old Colony House website
The significance of this case is that the Court of First Instance ("the CFI") considered the registrability of signs consisting of combinations of common English words even where the specified services were intended primarily for non-English speakers. It was an appeal by a German medical insurance company from the refusal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) ("OHIM"), the European trade marks registry, to register the sign "Companyline" as a Community trade mark in class 36 for insurance and financial affairs.
The Issue
Art 4 of the Community Trade Marks Regulation (Council Regulation of 20
Dec 1993 on the Community trade mark (40/94/EEC)) provides:
"A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
The wording of this
article is substantially the same as that of s.1 (1) of the Trade Marks
Act 1994. Art 7 (1) (b) prohibits the registration of trade marks which
are devoid of any distinctive character subject to paragraph (3) of the
article which provides that paragraph (1) (b) shall not apply if the
trade mark has become distinctive in relation to the goods or services
for which registration is required in consequence of the use which has
been made of it.
The Contentions
Shortly before the hearing of the appeal the applicant disclaimed any
exclusive right in the words ‘company’ and ‘line’. It argued that the
art 7 (1) (b) threshold for registration was very low and that the sign
must always be examined as a whole and not by separating it into its
component parts. ‘Companyline’ was not a term used in insurance and
financial affairs but had been coined specially for that sector. The
assessment of a mark’s distinctive character could not be confined to
the English speaking world. OHIM also failed to take into account the
fact that there are registered trade marks containing the words
‘company’ and ‘line’ in many member states and had thus failed in its
duty to harmonize Community trade mark law. OHIM accepted that the
distinctiveness threshold was low but denied that even that minimum
degree of distinctiveness was not present in this case. Art 7 (2)
provided that paragraph 1 shall apply even if the absolute grounds for
refusal obtain in only part of the Community.
The Decision
The CFI dismissed the appeal with costs. The decisive factor was a
sign's capacity to distinguish the goods of one undertaking from those
of another (see Case T-163/98 Procter & Gamble v OHIM [1999] ECR
II-0000, paragraph 20). It followed that distinctive character could be
assessed only in relation to the goods or services in respect of which
the application for registration of the sign was made. The sign "Companyline"
was devoid of distinctive character in that it was composed exclusively
of the words ‘company’ and ‘line’, both of which are customary in
English speaking countries. The word ‘company’ suggested that what was
in point were goods or services intended for companies or firms. The
word ‘line’ had various meanings in insurance and financial services,
including a branch of insurance or a line or group of products. They
were thus generic words simply denoting a line of goods or services for
undertakings. Coupling them together without any graphic or semantic
modification did not imbue them with any additional characteristic such
as to render the sign, taken as a whole, capable of distinguishing the
applicant’s services from those of other undertakings. The fact that the
word ‘Companyline’ as such does not appear in dictionaries, whether as
one word or otherwise, was immaterial. As for the harmonization point,
it was sufficient under article 7 (2) for an absolute ground of refusal
to obtain in only part of the Community. In this case, refusal to
register was justified on the ground that the word ‘Companyline’ was not
eligible for protection in the English speaking world.
The Appeal
The applicant appealed unsuccessfully to the European Court of Justice
(see Case C-104/00).
Comment
Companyline was not the first application for registration of a sign
that is composed exclusively of words that are customary in English
speaking countries. Probably the best known example of such a sign is
Microsoft which, when dissected in the same way as the CFI dissected "Companyline",
is not much more than a combination of two abbreviations for common
English words - "micro" and "soft" - denoting software for
microcomputers. At first blush, it is hard not to have some sympathy for
the applicant's complaint that OHIM had misused its powers by applying
far more stringent criteria in "Companyline" than was its usual
practice. The difference, however, is that Microsoft has become
distinctive in relation to the goods and services for which it is
registered in consequence of the use that has been made of it. The Court
of Appeal has recently considered in Healing Herbs Ltd v Bach Flower
Remedies Ltd [2000] FSR 513 how a sign may become distinctive
through use. Relying on Viscount Maugham's endorsement in The
Shredded Wheat Co. Ltd. v Kellogg Co. of Great Britain Ltd. [1940]
57 RPC 137 of Parker J's dicta in Re Gramophone Company's Application
[1910] 2 Ch 423 and on Jacob J's observation in British Sugar Plc v
James Robertson & Sons Ltd. [1996] RPC 281, they concluded that a
word's original meaning has to be displaced in order to become
distinctive. That is essentially a question of fact to be determined on
the materials before the judge in each case.
Articles
John
Lambert The Trade Marks Act 1994
John Lambert The Trade
Marks Rules 2000
3 May 2000
John Lambert Community
Trade Marks
9 April 2003
