Article 119 refusal highlights stricter approach to descriptiveness

In Telefon & Buch VerlagsgmbH v Office for Harmonization (OHIM), the European Court of Justice (ECJ) has dismissed an appeal against the refusal to register the marks UNIVERSALTELEFONBUCH (universal telephone book) and UNIVERSALKOMMUNIKATIONSVERZEICHNIS (universal communications directory) as Community trademarks.

Telefon & Buch VerlagsgmbH applied to register UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS with the OHIM. The OHIM refused registration on the grounds that they were descriptive. The European Court of First Instance (CFI) upheld the OHIM's decision and Telefon & Buch appealed to the ECJ. It contended that although the marks could have a certain meaning for the average consumer, they were registrable as they were not yet part of the general language and were not listed in any dictionaries. It added that the OHIM and the CFI should have considered the two marks as new word combinations with several possible meanings that would not necessarily communicate to the average consumer any clear concept of the related goods and services.

However, the ECJ applied Article 119 of its Rules of Procedure and rejected the appeal without a hearing on the grounds that it was obviously unfounded. The ECJ held that the CFI's finding that UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS had a descriptive meaning easily understood by the average consumer was a question of fact and not a question of law. Thus, the CFI's decision on that issue could not be reviewed by the ECJ, which in turn led the ECJ to reject the appeal as obviously unfounded.

The ECJ's refusal to examine this question is yet another example of its move away from the ruling in the BABY-DRY Case and highlights its stricter approach to the issues of descriptiveness and the registration of new word combinations. This decision indicates that applicants are likely to find it more difficult to bring appeals relating to issues of descriptiveness before the ECJ as they too may fall foul of Article 119 of the Rules of Procedure.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna