Artificial grass manufacturer loses trademark turf war

In Fieldturf Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision to refuse the registration of the word mark LOOKS LIKE GRASS…FEELS LIKE GRASS…PLAYS LIKE GRASS as a Community trademark for a synthetic playing surface for various sporting activities. It held, among other things, that the mark lacked distinctive character and would be perceived solely as a promotional slogan.

Canadian firm Fieldturf Inc manufactures synthetic surfacing that replicates natural grass. It filed an application to register LOOKS LIKE GRASS…FEELS LIKE GRASS…PLAYS LIKE GRASS for goods and services in Classes 27 and 37 of the Nice Classification. The OHIM refused registration on the grounds that the mark was devoid of any distinctive character pursuant to Article 7(1)(b) of the Community Trademark Directive as it simply described that the product was similar to grass. It noted that the mark was used as an advertising slogan, meaning that it could only be regarded as distinctive, if the relevant consumer group immediately perceived that it was an indication of the commercial origin of the goods or services in question. In the OHIM's view, this was not the case for Fieldturf's mark.

Fieldturf appealed, arguing that the unusual grammatical and rhythmical structure of the mark, as well as its poetic character and "rhetorical flourish", gave it the minimum level of distinctiveness required for registration. The CFI rejected this argument and upheld the OHIM's decision.

The CFI stated that the mark merely indicated that the product for which registration was sought "[h]as the same appearance as grass…Produces the same sensation as grass…Is as suitable for playing on as grass". Therefore, the trademark directly informed the relevant consumers that the goods have similar qualities to those of natural grass. According to the CFI, there was no "rhetorical flourish".

The CFI also agreed with the OHIM's reasoning that the mark would be perceived as a promotional slogan informing consumers that the product installed by Fieldturf had properties similar to those of natural grass. It would not be perceived immediately as an indication of the commercial origin of the goods or services in question.

The CFI did not rule out the possibility that the mark was potentially distinctive for the services claimed under the application (ie, the installation of synthetic surfaces). However, it noted that Fieldturf had applied for the registration of the mark in respect of the goods and the services relating to those goods, without distinction and, moreover, without applying to restrict its trademark application to the services alone in case the application was rejected for the claimed goods. Thus, in the CFI's view, the link between the goods and services was enough to justify applying the same reasoning to the claimed services as that applied to the goods. This finding is perhaps a little surprising as the claimed goods and services appear to be sufficiently specific to allow differentiation.

Stephan N Schneller, Maiwald Patentanwalts GmbH, Munich