ALLSAFE held to be descriptive of security goods and services

European Union
In allsafe Jungfalk GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-343/07, March 25 2009), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had held that the trademark ALLSAFE was descriptive in relation to goods and services relating broadly to safety. 
In November 2002 allsafe Jungfalk GmbH & Co KG applied for the registration of ALLSAFE as a Community trademark (CTM) for goods and services in Classes 6, 12, 22, 35, 39 and 42 of the Nice Classification. In February 2006 the examiner rejected the application on the grounds that the mark was descriptive of the goods and services in question and was devoid of distinctive character. In July 2007 the Fourth Board of Appeal upheld the examiner’s decision.
The board held that the ALLSAFE mark was descriptive under Article 7(1)(c) and devoid of distinctiveness under Article 7(1)(b) of the Community Trademark Regulation (40/94). Moreover, it stated that the relevant consumers would perceive the mark as implying that the goods and services in question would ensure their safety. Jungfalk appealed to the CFI.

Jungfalk raised a number of arguments under Articles 7(1)(c) and 7(1)(b) of the regulation:
  • In assessing the descriptiveness of the mark, the board had failed to analyze the designated goods and services individually. 
  • The relevant consumers were not likely to perceive the mark as descriptive of metallic construction materials in Class 6, advertising relating to motor vehicle technology in Class 35, or scientific and industrial research on motor vehicle and transportation technology in Class 42. In relation to the remaining goods and services, the word 'safe' was used as a noun and not as an adjective.
  • The mark had been registered for various goods and services in the United States and the United Kingdom. In addition, no ex officio objections had been raised to corresponding applications in Australia and New Zealand.
  • Other signs that were far more descriptive (eg, ALLTRAVEL and MEGATOURS for travel-related services) had been registered as Community trademarks.
  • The board had erred in not examining the distinctiveness of the mark per se, since it consisted of two elements ('all' and 'safe'). The mark formed a new word that was not used in the English language and allowed consumers to identify the origin of the goods and services in question.
The CFI first confirmed that a mark cannot be registered if it is descriptive of the goods or services covered by the application. It added that this rule also applied in cases where the grounds for refusal existed only in one part of the European Union.
The CFI, building on its previous decisions, emphasized that public interest required that anyone be able to use freely signs or indications that serve to designate characteristics of the goods or services. It then observed that when a mark is a neologism or a new word consisting of a combination of descriptive elements, it is inherently descriptive itself unless the impression created by the mark is sufficiently removed from that created by the combination of those elements. The CFI also recalled that the descriptive character of a mark must be assessed in relation to:
  • the link between the mark and the relevant goods; and
  • the perception of the relevant consumers (in this case, professionals and English-speaking consumers).
The CFI upheld the board’s view that the word 'allsafe' could be perceived by the relevant consumers as meaning 'totally safe' or 'totally reliable', which indicated that the designated goods and services offered complete security or ensured the security of goods or transportation. It considered that the relevant public would perceive the sign as a reference to the destination or as a description of other characteristics of the goods. In particular, the relevant public would understand that security played a basic role in relation to the goods and services, notably in their transportation.
With regard to the word 'safe', the CFI noted that the registration of a word mark should be refused if one of its possible meanings points out a characteristic of the designated goods or services. Likewise, the fact that the word 'allsafe' did not exist in English did not create an impression sufficiently removed from the combination of the elements 'all' and 'safe'.
The CFI further held that OHIM was entitled to assess the mark as a whole for all the designated goods and services. The CFI noted that ALLSAFE could be perceived as an indication of an important characteristic of the designated goods and services in Classes 6, 12, 22 and 39 (which guaranteed a kind of security) and of the services in Classes 35 and 42 (which contributed to the development of such a characteristic). Hence, the CFI concluded that ALLSAFE would be considered as alluding directly to the excellence of the goods and services in question.
In relation to the national trademarks to which Jungfalk had referred, the CFI reasserted that the CTM legal regime is completely autonomous. 
Finally, the CFI reiterated that the legality of the decisions of the Board of Appeal should be assessed solely on the basis of the regulation, and not on the basis of previous case law. It concluded that there was no need to examine the distinctiveness of the mark since one of the absolute grounds for refusal had been fulfilled - that is, the mark was descriptive and therefore unregistrable under Article 7(1)(c).
Since Jungfalk has been operating in the relevant industry since 2004, it is perhaps surprising that no arguments regarding the possible acquired distinctiveness of the mark under Article 7(3) were raised in this case.
Chris McLeod and Myrsini Feliou, Hammonds LLP, London

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