Board of Appeal overturns Patent Office decision in MOLESKINE case

The Board of Appeal has issued a decision in a case involving the trademark MOLESKINE.

At issue in this case was whether the word mark MOLESKINE for various goods in Classes 18 and 25 of the Nice Classification had sufficiently distinctive character to fulfil the conditions set forth in Article 13 of the Trademarks Act (45/1997).

It was the opinion of the Patent Office that the trademark MOLESKINE is descriptive of the goods covered in Classes 18 and 25. However, the Patent Office accepted the mark for registration for goods and services in Classes 9, 11, 14, 20 and 41.

The Patent Office held that the suffix '-skine' is almost identical to the Icelandic word 'skinn', which is a synonym of the Icelandic word 'leður' ('leather') and, therefore, the trademark MOLESKINE would evoke the idea, in the mind of Icelandic consumers (even those who do not understand French), that the goods in question are made of “some kind of leather”. Further, the Patent Office argued that the trademark is almost identical to the English word 'moleskin' and the Icelandic word 'molskinn', and that it had not been shown that the word 'molskinn' is not used in the Icelandic language.

Regarding this part of the reasoning, the owner of the mark had argued that this Icelandic word was not in common use. There is no generally acknowledged method for investigating whether a word is 'alive' in the Icelandic language. Such investigation can be approached, for example, by searching a digital library at www.timarit.is, where millions of pages in digital format are made available on the Internet. This gives access to the printed cultural heritage that is preserved in newspapers and periodicals published in Iceland. Access is open to everyone and the material is made available by using the latest methods in information technology. The goal is to enhance access to printed newspapers and periodicals and to enable new methods for researchers. In addition to general news and advertisements, the newspapers and periodicals contain, and refer to, subjects such as literature, history, politics, business, trade and industry. Therefore, this digital library can present a valuable tool when investigating the actual use of a given word in the language.

An investigation of the use of the word 'molskinn' shows first use in 1891. This word was mostly used between 1910 and 1929 (probably under the influence of the English or Danish languages). Use then decreased until it increased again between 1952 and 1960. Since then, only 29 examples of such use exist according to this source. In the last three decades, only three examples may be found.

Further, the Patent Office reasoned that the French language has a special relation to the goods in question in Classes 18 and 25, and that France and fashion goods are related in the mind of consumers. The Patent Office thus refused to register the mark in Classes 18 and 25.

The Board of Appeal overturned the decision.

In a rather general introduction, the Board of Appeal stated that marks that are considered descriptive do not fulfil the conditions of Article 13 of the Trademarks Act. The same applies to marks that include signs or phrases commonly used in business or daily life. The arguments for the condition that marks should possess distinctive character are, on the one hand, that descriptive marks are not suited to identify the goods of the owner of the mark from the goods of others and, on the other hand, that no one should have sole rights over words that everyone needs to use in the respective field of business. When evaluating whether or not a mark fulfils the condition for distinctiveness, each case must be considered according to the facts and circumstances, such as the goods for which registration is sought and former uses. Further, it was stated that word marks in a foreign language can also lack distinctive character in Iceland if it can be assumed that the majority of the general public has knowledge of the language, as for example is the case with English.

In addition, the board argued that, even if French is to be considered as one of the main languages on the markets that are most relevant for Iceland, it could not be concluded from the documents submitted and from an independent examination on behalf of the Board of Appeal that the meaning of MOLESKINE is known in Iceland or that such word is used by a large proportion of Icelandic consumers. The board did not consider it likely that registration of the mark would hinder competitors in the same field in advertising their goods. Further, the board was of the opinion that the level of knowledge of French among Icelandic consumers is not such that the mark should evoke in the mind of consumers that the goods in Classes 18 and 25 are made of imitation leather or the like.

The opinion of the Board of Appeal was that the mark is not descriptive for the goods covered in Classes 18 and 25. The mark was thus accepted for registration in these classes.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík