In Avon Products v Office for Harmonization in the Internal Market (OHIM) (Case T-184/07, November 26 2008), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had held that the mark ANEW ALTERNATIVE was devoid of any distinctive character.
Avon Products Inc
applied for the registration of the word mark ANEW ALTERNATIVE as a Community trademark for a broad list of goods in Class 3 of the Nice Classification
. The OHIM examiner rejected the application on the grounds that the mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of the Community Trademark Regulation
(40/94). The Second Board of Appeal affirmed, holding that the mark would be perceived by the relevant consumers - namely, the average English-speaking consumers - as meaning ‘a new alternative’, "a combination of ordinary terms which makes up an advertising message relating to the goods concerned, particularly given the phonetic identity of the two expressions".
Avon appealed to the CFI. With regard to the distinctiveness of the mark, Avon argued as follows:
- The board failed to take account of the overall impression produced by the mark by separating ‘anew’ into two elements, namely ‘a’ and ‘new’.
- The word ‘anew’ is not a lexical invention resulting from the simple juxtaposition of the terms ‘a’ and ‘new’, but has a completely different meaning, namely ‘in a new way’ or ‘again’.
- The grammatically incorrect use of the element ‘anew’ renders the mark surprising and fanciful.
- The board failed to adduce any evidence to substantiate its conclusion that the relevant consumers would split the word ‘anew’ into two separate elements and would thus perceive the mark applied for as ‘a new alternative’.
- It follows from OHIM’s Examination Guidelines that a misspelling which is fanciful or striking, or which changes the meaning of a sign, is sufficient to ensure that the mark will not fall under the absolute grounds for refusal set forth in Article 7(1)(c) of the regulation. By analogy, this reasoning should also apply to Article 7(1)(b).
Second, Avon argued that the board had infringed the principle of equal treatment on the following grounds:
- a large number of national and Community registrations have been obtained for the term 'anew', whether alone or in combination with other elements, which is indicative of the distinctive character of the mark; and
- Avon had a legitimate expectation that OHIM would observe its guidelines.
Third, Avon contended that the CFI should take into consideration new evidence of use of the mark.
With regard to the first set of arguments, the CFI stated that the distinctive character of the mark should be determined by reference to the perception of the average English-speaking consumer. The CFI went on to say that the mark would be used both in writing and orally, and that oral use was particularly significant in this case:
“It must also be observed that the goods covered by the mark applied for are sold in supermarkets, where visual communication takes precedence over oral communication, as well as in specialist shops, where the importance of those two means of communication is generally comparable, and by way of doorstep selling, where the oral aspect is predominant. Consequently, the mark applied for will be used both in writing and orally.”
The CFI held that the relevant consumers would perceive the mark as meaning ‘a new alternative’, since the combination of the elements ‘a’ and ‘new’ in ‘anew’ is not normally perceptible aurally. In those circumstances, the relevant consumers would attribute a specific conceptual content to the mark (namely, ‘a new alternative’) and would not understand it as meaning ‘anew alternative’, a construction devoid of meaning. The court went on to state that ‘a new alternative’ would be perceived as an advertising slogan indicating to consumers that the products or services concerned offer an alternative to the existing goods or services, and not as an indication of its commercial origin.
With regard to the second argument, the CFI reiterated that the Community trademark regime is an autonomous system with its own set of objectives and rules. Consequently, the registrability of a sign as a Community trademark must be assessed by reference to the relevant EU rules only.
With regard to the third argument, the court refused to take into consideration evidence (presumably evidence of acquired distinctiveness) that was submitted before the CFI for the first time. The court noted that its task was to review the legality of the decision of the board, not to re-evaluate the factual situation based on new evidence.
In light of the foregoing, the CFI held that the board had not erred in refusing to register the mark under Article 7(1)(b) of the regulation. The action was thus dismissed.
Peter Gustav Olson, MAQS Law Firm, Copenhagen