Board of Appeal gives guidance on descriptiveness and acquired distinctiveness

The Board of Appeal has ruled in an appeal by AS Lavateir against a Patent Office decision to refuse the registration of trademark TORUABI (‘pipeassistance’ in English) in Classes 37, 39 and 42 of the Nice Classification (decision No 1361-o, September 28 2012).

In 2000 Estonian company AS Lavateir registered the trademark TORU ABI KIIRE ABI VAJALIKUL HETKEL and device (‘pipe assistance quick help when you need it’ in English) in Class 37. The registration contained separate disclaimers for the dominant word elements ‘toru’ and ‘abi’. Based on the common practice at the time of the registration, this meant that the word combination itself was considered to be distinctive.

In 2009 the company applied to register the trademark TORUABI as a word mark in Classes 37, 39 and 42. In 2011 the Patent Office refused to register the mark on the grounds that it:

• lacked distinctiveness;
• was descriptive; and
• was commonly used in the plumbing business.

The applicant’s claim that the mark should be registered based on acquired distinctiveness was rejected.

In October 2011 the applicant filed an appeal against the refusal with the Board of Appeal, arguing as follows:

• The refusal to register the word mark eliminated the protection granted by the first registration. Moreover, the change of position of the Patent Office did not take into account the need for legal certainty and the investments made by the applicant into its trademark.
• Although the trademark might be considered to be suggestive of the fields of activity of the applicant, the reference to plumbing was not so strong that the mark should be deemed to be descriptive, especially with regard to those services that were not connected to plumbing.
• As regards the descriptive use of the term ‘toruabi’ in the plumbing business, the evidence - which consisted of printouts from the internet made at the time of the examination (ie, one-and-a-half years after the application date) - was not objective in light of the number of companies active in the plumbing business and the fact that the applicant had no control or influence over the internet.
• Even if it was deemed that the mark was descriptive, it had acquired distinctiveness through intensive use over the 13 years preceding the filing date of the application.
• The fact that the applicant had to prove that its mark was distinctive at the time of the application, but the office could refuse to register the mark based on the situation at the time of the examination, was unreasonable.

The Board of Appeal ruled as follows:

• The word ‘toruabi’ is descriptive. Although it is not included in dictionaries, it is understood as a compound word consisting of descriptive terms in relation to plumbing. However, the descriptiveness of the mark did not extend beyond services connected to plumbing.  
• The Board of Appeal disagreed with the office’s finding that the term ‘toruabi’ was commonly used in the plumbing business. It found that such use did not extend outside the plumbing business, but also ruled that 13 internet printouts made at the time of the examination might not be sufficient.
• The time gap between the filing date and the examination date could not be held against the applicant, who had no control over events that took place in the market after the filing of the application. Therefore, the circumstances on which the refusal was based should have been as close as possible in time to the application date.
• The office had erred in finding that the trademark had not acquired distinctiveness through use. Based on the use of the trademark as a domain name, in advertising and on the company’s numerous vehicles, consumers would perceive TORUABI as a reference to the applicant, and not as a descriptive word. Based on that presumption, the statistical data (web page visits and business directory inquiries) should be interpreted as showing that consumers sought to contact a particular company, rather than just looking for plumbing assistance.  

The Board of Appeal thus annulled the Patent Office’s decision and referred the application back to it for re-examination. The office must specifically state the services for which the mark is considered to be descriptive, and then register the mark for those services based on acquired distinctiveness. The office must list those services separately in the registration certificate.

Almar Sehver, AAA Legal Services, Tallinn