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
The Court of First Instance had to decide about the distinctive qualities of the Mars bar shape.
Mars Inc had registered a three-dimensional Community trade mark, Nice Classes 5, 29 and 30 of the Nice Agreement.
The German chocolate manufacturer Ludwig Schokolade filed an application for a declaration that this mark was invalid. This application was rejected by OHIM’s Cancellation Division, however Ludwig Schokolade’s appeal filed against this decision was successful. Accordingly Mars’ trademark was declared invalid. The Court of First Instance confirmed this decision and dismissed the action brought forward by Mars Inc based on the following key findings:
An elongated shape with rounded ends is not significantly different from other shapes commonly used for chocolate bars. Chevrons on top of a Mars bar are decorative elements and not a sign indicating the product’s commercial origin.
A mark can only be registered on the grounds of distinctiveness in consequence of the use which has been made of it, if this distinctiveness has been acquired in each of the states being a Member State at the time registration was sought.
The amount of time alone, a sign has been used in certain Member States is not sufficient to show that the public targeted by the product perceives it as an indication of commercial origin.
(Court of First Instance, T‑28/08, 8 July 2009)
July 14, 2009 No Comments
A single letter (here the Greek letter Alpha “α” is protectable as a figurative trademark without further enhancement or graphic design.
It was disputed that the sign at issue has distinctive character because it consists only of one single letter. A lack of distinctiveness is an absolute ground for refusal to register a Community Trademark pursuant to Article 7(1)(b) of Regulation No 40/94.
The court has decided, that a single letter in deed can have the distinctive character required under Article 7(1)(b) of Regulation No 40/94 if it is suitable in principle in the individual case to distinguish the origin of a product in the eyes of the relevant circles of the public.
The court reasons that:
“It is apparent from the case-law that Article 7(1)(b) of Regulation No 40/94 draws no distinction between the different categories of trade mark and that the criteria for assessment of the distinctive character of trade marks which consist of a single letter are the same as those applicable to the other categories of trade mark.”
The European Court of First Instance has therefore referred back the trademark application to OHIM for re-examination in the light of the grounds of the judgement.
European Court of First Instance (T‑23/07, 29th April 2009)
June 17, 2009 No Comments