Important
Jane Lambert
29 Jan 2005
In this application, the Court of First Instance annulled the decision of the Fourth Board of Appeal of 20 June 2003 dismissing an appeal by Deutsche Post EURO EXPRESS GmbH ("Deutsche Post") against the examiner's refusal to register the sign EUROPREMIUM as a Community trade mark in classes 16, 20, 35 and 39 of the Nice Agreement. The specified goods included goods materials intended for packaging, storage or transport and the services advertising, management or business assistance services, transport and storage. The Board had dismissed the appeal on the ground that art 7(1) (c) of the Community Trade Mark Regulation precluded registration of the mark EUROPREMIUM since the mark was likely to be perceived by consumers as an indication of the notable quality and European origin of the goods and services covered by the mark application.
The Principles to be applied
The Court explained that the prohibition in art 7 (1) (c) of
registration of signs that consist exclusively of signs or indications
which may serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin or the time of production
of the goods or of rendering of the service, or other characteristics of
the goods or service pursues an aim in the public interest which
requires that such signs and indications may be freely used by all. The
prohibition therefore applies only to those signs and indications which
may serve, in normal usage from the point of view of the target public,
to designate, either directly or by reference to one of their essential
characteristics, the goods or services in respect of which registration
is sought. Consequently, for a sign to fall within the scope of that
prohibition in that provision, it must suggest a sufficiently direct and
concrete link to the goods or services in question to enable the public
concerned immediately, and without further thought, to perceive a
description of the category of goods and services in question or of one
of their characteristics. Accordingly, a sign’s descriptiveness can only
be assessed by reference to the goods or services concerned and to the
way in which it is understood by a specific intended public as in
CARCARD
and
UltraPlus.
Application
In the present case, the goods and services for which registration was
sought were targeted towards the general public. As the prefix ‘EURO’ in
the sign was likely to be understood as a reference to the adjective
‘European’, and the word ‘PREMIUM’ means in English ‘of high quality’,
the composite word was likely to give the impression in the consumer’s
mind that he was dealing with quality goods or services coming from
Europe. The issue for the Court was whether the sign EUROPREMIUM,
understood as an allusion to high quality goods and services of European
origin, suggests a direct and concrete link to the goods and services in
question such as to bring the sign within the scope of the prohibition.
The Court considered that it was not. To come within the scope of the
prohibition a word sign must serve to designate in a specific, precise
and objective manner the essential characteristics of the goods and
services at issue. Neither the prefix "EURO" nor the word "PREMIUM" did
that.
Articles
Jane Lambert The Trade Marks Act 1994
Jane Lambert The Trade
Marks Rules 2000
3 May 2000
Jane Lambert Community
Trade Marks
9 April 2003
