Board decision annulled based on failure to establish descriptiveness

European Union
In O2 (Germany) GmbH & Co OHG v Office for Harmonization in the Internal Market (OHIM) (Case T-344/07, February 10 2010), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had held that the mark HOMEZONE was descriptive in relation to all of the goods and services covered by the application.
On October 10 2005 O2 (Germany) GmbH & Co OHG filed an application for the registration of HOMEZONE as a Community trademark for goods and services in Classes 9 (including "apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, data processing equipment and computers"), 38 (including "telecommunications services") and 42 (including "engineering services; computer programming; computer programming services") of the Nice Classification. The application was rejected by the OHIM examiner under Articles 7(1)(b) and (c) and (2) of the Community Trademark Regulation (40/94) (now Articles 7(1)(b) and (c) and (2) of the Community Trademark Regulation (207/2009)), on the grounds that the mark was devoid of distinctive character.
O2 appealed. The Board of Appeal of OHIM upheld the examiner’s decision, stating that HOMEZONE consisted exclusively of indications which could serve, in trade, to designate the characteristics of the goods and services in question and, therefore, was not capable of distinguishing these goods and services according to their commercial origin. The board argued that one of the possible meanings of the word element 'homezone' for German-speaking consumers would be 'Heimbereich' (home area) or 'Nahzone' (local area). Therefore, 'homezone' could designate a zone to which a reduced tariff applies, comparable to landline tariffs, which constitutes one of the characteristics of the telecommunications services included in Class 38.
The board referred to examples given by the examiner, based on internet articles and information from Wikipedia, which demonstrated that the term 'homezone' was used by certain providers of telecommunications services, not as a trademark, but descriptively. It pointed out that the tariff advantage was also a factor relevant to the other services in Class 38, which were usually offered with telecommunications services. Moreover, the goods in Class 9 and the services in Class 42 were indispensable for the provision of telecommunications services.     
O2 appealed to the General Court.
The court reaffirmed former case law (SUPERSKIN (Case T-486/08)), according to which a neologism will not be deemed to be descriptive merely because it is composed of two descriptive words - rather, the neologism itself must be descriptive. The neologism will not be descriptive if there is a perceptible difference between the neologism and the sum of its parts. It must create an impression which is sufficiently far removed from merely combining the meanings of the two parts, such that the combination produces “something more” (for further details on the SUPERSKIN decision please see "SUPERSKIN held to be descriptive").
However, it was insufficient to state that HOMEZONE was capable of designating the reduced tariff of the mobile telephone service described without specifying how that mark, which could designate a 'home area' or 'local area', involved a reference to the idea of a tariff and, as a result, was capable of designating a telecommunications service characterized by a specific system. The Board of Appeal had thus failed to establish that HOMEZONE could designate a telecommunications service in Class 38, or one of its characteristics. Consequently, the board had erred in finding that the mark was also descriptive of the other services in Class 38 on the sole ground that those services were associated with the mobile telephone service which involved the 'homezone' tariff option.
In stating that the goods and services in Classes 9 and 42 were indispensable for the provision of telecommunications services, the board described a functional relationship between those goods and services and one of the services in Class 38. However, it should have pointed to the existence of a direct and specific link which the relevant public could establish between the term 'homezone', which may be associated with the idea of geographical location, and the goods and services in question.
With respect to Article 7(1)(b), the court held that the lack of distinctive character of the term “homezone” could not be inferred only by an analysis of its descriptiveness. The board should have carried out a specific examination of the grounds for refusal laid down in Article 7(1)(c).
The decision is interesting in that it clearly stated that mentioning titles and addresses of internet websites referring to the term 'homezone', without specifying how that term was capable of designating the services in question, was an insufficient argument. Furthermore, the decision shows that information from Wikipedia must also be disregarded, since it is a collective encyclopaedia which may be amended at any time, by any visitor, even anonymously.
Friederike Bahr, Beiten Burkhardt, Munich

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