CLEARWIFI held to lack distinctiveness for telecommunications services

European Union
In Clearwire Corp v Office for Harmonization in the Internal Market (OHIM) (Case T-399/08, November 19 2009), the Court of First Instance (CFI) has held that the trademark CLEARWIFI lacked distinctive character for services in Class 38 of the Nice Classification.
On August 14 2007 US company Clearwire Corp obtained an international registration designating the European Union for the word mark CLEARWIFI with respect to “telecommunications services, namely, providing high-speed access to computer and communication networks, and the electronic transmission of voice, video and data via computer and communication networks” in Class 38. On September 27 2007 OHIM received notification.
The OHIM examiner and the Board of Appeal of OHIM both refused protection of the mark in the European Union on the grounds that it lacked distinctive character for the services at issue. In particular, the board pointed out that individuals or businesses in the European Union needing to access computer and communications networks, such as the Internet, would understand CLEARWIFI as describing the purpose of the services (ie, the offering of wireless connections) and their quality (ie, free from disturbance). Clearwire appealed, but the CFI affirmed the board’s decision.  
According to the CFI, CLEARWIFI did not diverge from English rules of syntax or word composition. The CFI further held that the mark did not have a vague or evocative meaning. On the contrary, it could be perceived by the relevant public as indicating a particular form of technology (ie, wifi technology) which enables the wireless connection of computers and other electronic equipment, either with each other or to the Internet, and which is resistant to external interferences. The CFI concluded that although such link related only to some of the services at issue, this was insufficient to affect the lawfulness of the board's decision.
The decisions of OHIM and the CFI are in line with established case law and the EU authorities' strict approach with regard to distinctive character. Arguably, the CFI was correct in finding that CLEARWIFI, which is composed of two words with immediate meanings, was not unusual in its structure.
Nevertheless, the CFI's decision is interesting in terms of trademark strategy. Registration was refused because there existed a direct link between the mark and some of the services at issue. However, there was no direct link between the mark and “electronic transmission of voice, video and data via computer and communication networks”. Therefore, it may have been possible to obtain registration of the mark by limiting the specification to those particular services.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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