CFI pours cold water on AIRSHOWER

European Union
In Hansgrohe AG v Office for Harmonization in the Internal Market (OHIM) (Case T-307/07, January 21 2009), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had refused registration of the trademark AIRSHOWER in relation to certain goods in Class 11 of the Nice Classification on the grounds that the mark was descriptive of those goods. 
In January 2006 Hansgrohe AG applied for the registration of the mark AIRSHOWER as a Community trademark (CTM) for goods in Class 11. Hansgrohe later limited the specification of the goods. In August 2006 the OHIM examiner held that the mark was descriptive of some of the goods for which registration was sought and rejected the application in relation to the following goods in Class 11:

"taps/mixers, shower cubicles and systems, shower units, complete shower systems, pre-assembled multipurpose showers, shower heads and accessories, shower head sets, hand showers, body showers, head showers, lateral shower jets, nozzles as shower elements, shower head supports, pre-assembled multipurpose shower jets."
Hansgrohe appealed. In May 2007 the Board of Appeal of OHIM upheld the examiner’s decision, finding that the mark was descriptive and lacked distinctiveness. The board concluded, among other things, that:

  • the mark consisted exclusively of two common terms, the combination of which was grammatically correct and did not have any characteristics that would make it unusual; and
  • the mark was descriptive of a quality of the relevant goods.
Hansgrohe raised a number of arguments similar to those set forth in two other decisions issued on the same day, Korsch AG v OHIM (Case T-3296/07) and giropay GmbH v OHIM (Case T-399/06), and elicited a similar response from the CFI (for further details please see "CFI dispenses registrability advice in PHARMACHECK Case" and "No credit given to giropay’s arguments on distinctiveness"). The main points of the CFI's decision were as follows:
  • Registration of the mark in the United States or in an EU member state was irrelevant as the CTM regime is wholly independent from any other.
  • The fact that a word mark does not exist in the relevant language(s) does not preclude it from being descriptive. A mark will be descriptive if only one of its possible meanings is descriptive.
  • A neologism consisting of several descriptive elements will itself be descriptive, unless some creative input renders the impression created by the mark as a whole sufficiently removed from that created by the mere combination of its components (which was held not to be the case for AIRSHOWER).
  • A word mark must be assessed independently of any specific graphic or spelling characteristics which it may assume. Here, the capital letters and the absence of spacing between the two word components ('AirShower') did not amount to creative input that would enable consumers to identify the mark with Hansgrohe’s goods.
 A number of the points raised in this case gave the CFI the opportunity to clarify its view on the relevance of certain factors - and, in particular, new technologies which may not be known to relevant consumers - in assessing the descriptiveness of a mark. The CFI also considered what weight should be given to non-EU evidence and translations of the mark into various languages. In this case, the relevant consumer was the average English-speaking consumer in the European Union.
Hansgrohe argued that air showers relying solely on air jets exist and are used in certain industries. Hansgrohe contended that if the mark was descriptive, it would be in relation to this type of equipment (which is unknown to the general public), and not in relation to equipment based on the release of water, such as the goods for which registration was sought.

The CFI noted that this argument had not been raised before the Board of Appeal. However, rather than dismissing it on this basis, the CFI held that because the relevant consumer would not know of air showers used in such a specialized context, their existence was irrelevant in deciding whether the mark was descriptive of goods in Class 11.
The second series of arguments concerned new water-saving technology, whereby air is blown into or mixed with water droplets and then released through taps and jets. The Board of Appeal had taken into account a press release on this new technology published on the Internet by Australian scientists as evidence that the mark was descriptive.

Hansgrohe first argued that this evidence was irrelevant. The technology referred to in the Australian press release was not known to the relevant consumer and, therefore, the latter could not perceive the mark as descriptive of goods using this technology. However, the CFI agreed with the board’s reasoning that likely future developments should be taken into account in assessing descriptiveness. The board had considered that even though the press release emanated from Australia, the greater awareness of environmental issues and the current trend of developing increasingly 'green' technologies meant that:

  • this technology would probably spread around the world; and
  • in the future, the mark would be perceived as descriptive by the relevant consumer.
The CFI concluded that Article 7(1)(c) of the Community Trademark Regulation (40/94) did not require the technology to be known to the relevant consumer as of the date of the trademark application in order for the mark to be found descriptive.

Hansgrohe also argued that the essential characteristic of showers using this technology was that they released water rather than air. The CFI reiterated that the regulation did not require that the mark be descriptive of an essential characteristic of the goods. Therefore, AIRSHOWER could be descriptive of showers using this new technology.

Hansgrohe further argued that the press release did not refer to the term 'air shower' as a proper description of that type of shower, as the words had been used with quotation marks and the expression "aerated shower head" had been used to designate the object itself. The CFI held that typesetting choices made in an Australian press release would be irrelevant to the relevant consumer’s perception of the mark. The CFI also found that a mark could be descriptive even when synonymous terms or expressions (in this case, "aerated shower head") could be used to describe the characteristic in question.
Hansgrohe raised another interesting point in relation to the potential meanings of the mark and of its components. Hansgrohe challenged the comparison made by the examiner between the mark and one of its possible translations in German. It also argued that because of the many possible translations of both its word components, the mark was not capable of describing the goods or their relevant characteristics. The CFI held that possible translations of the mark or its components were irrelevant, as the relevant consumer was an English-speaker. However, this case highlights the potential complications of having the perception of a word mark by speakers of a given language assessed by examiners reasoning in another language. Arguably, if an applicant is not allowed to invoke possible translations of an English mark, OHIM and the CFI should not be allowed to seek to ascertain its meaning on the basis of its translation into German or French.

Marine Baudriller, Hammonds LLP, London


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