Adobe loses FLEX appeal

In Adobe Systems Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-158/06, October 23 2008), the Court of First Instance (CFI) has emphasized that the fact that a mark is registered nationally outside the European Union is no proof of its registrability as a Community trademark.

Adobe Systems Inc's predecessor in title, Macromedia Inc, applied to register the mark FLEX as a Community trademark in respect of various computer-related goods and services in Classes 9, 38 and 42 of the Nice Classification. The application was refused on the grounds that the mark was non-distinctive and descriptive under Articles 7(1)(b) and (c) of the Community Trademark Regulation (40/94).

Macromedia appealed. Adobe informed the OHIM of the fact that Macromedia had assigned the FLEX mark to it. The Board of Appeal annulled the examiner's decision to refuse registration of the mark for “computer hardware, computer peripherals and data processing equipment” in Class 9 and all the services in Class 38, but dismissed the rest of the appeal. Adobe appealed to the CFI.

The CFI held that the Board of Appeal had correctly found on the evidence that the word ‘flex’ was the name of a real-time computing language. The existence of national registrations for the same word in the United States and Canada was not conclusive, since Adobe had not explained what the standards for the assessment of trademarks were in those countries with regard to absolute grounds for refusal.

The CFI thus dismissed the appeal.

Jeremy Phillips, IP consultant to Olswang, London

Adobe loses FLEX appeal

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