In Case T‑191/08 the European Court of Justice (ECJ) declined JOOP!’s motion to permit registration of a single exclamation mark placed inside a rectangle as a Community trademark.
The court ruled that this mark lacks distinctive character and therefore can not be registered as a trademark, pursuant to Art 7 Sec. 1b) of Regulation No 40/94. The single exclamation mark is a mere eye catcher, not suitable to convey the origin of goods.
The court also rejected the point that the mark had acquired a secondary meaning as a trademark pursuant to Art. 7 Sec. 3 of Regulation 40/94. JOOP! not only failed to deliver proof in time. The documents provided referred to the German market only and not – as it would have been necessary – to all markets in all member states.
October 12, 2009 5 Comments
This case is all about the question if the word “Alaska” unfolds descriptive character for beverages such as mineral water.
In 1998 the German brewery Schwarzbräu GmbH had registered a figurative Community trade mark consisting of the word “Alaska” and the picture of an ice bear on a sheet of ice (Nice class 32). In 2001 the German beverage company Rhön-Sprudel Egon Schindel GmbH filed a request to declare the registration of this trade mark invalid, based on an alleged infringement of Article 7(1)(c) Regulation (EC) No 40/94 (absolute ground for refusal for marks consisting exclusively of signs which indicate geographic origin). This request was rejected by the Cancellation Division. The appeal against this decision was also unsuccessful.
The Court of First Instance confirmed OHIM’s decisions. It did not see the mark having any descriptive character in relation to the goods concerned.
The relevant circles of the public do not make a connection between this mark, namely the word, Alaska (as a region) and as the origin of mineral water or other non-alcoholic beverages.
As far as Rhön-Sprudel had referred to a decision of the Federal Court of Switzerland, the court highlighted, that OHIM’s decisions were to be judged exclusively on the basis of Regulation (EC) No 40/94 and its interpretation by a Community Judge. Not really surprising, is it?
(European Court of First Instance, T‑225/08, 8. July 2009)
July 17, 2009 1 Comment
Pursuant to Sec. 8 (2) No. 2 Trademark Act, the letters “CCCP” designating the former Soviet Union can not be registered as a trademark for clothes, T-shirts and sweatshirts.
Despite the fact that the former Soviet Union does no longer exist as a state, the Cyrillic letters CCCP are still suited as designation of geographical origin pursuant to Art. 8 (2) No. 2 Trademark Act.
The decision is based on two key points:
1. Also an out – of – date local designation may be non protectable if it is still seen as indication of location at least in parts of the relevant circles.
2. National designations of no longer existing states can evolve into – non protectable – indirect designations of geographic origin.
Federal Patent Court 21. Jan 2009 – 26W (pat) 2/ 08
May 21, 2009 No Comments