'Continental' held to be descriptive of dogs
In Continental Bulldog Club Deutschland eV v Office for Harmonisation in the Internal Market (OHIM) (Case T-383/10, April 17 2013), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that the word mark CONTINENTAL was descriptive and devoid of any distinctive character for “life animals, eg dogs” (Class 31), as well as “the keeping and breeding of dogs, eg puppies and animals for breeding” (Class 44).
On September 7 2009 Continental Bulldog Club Deutschland eV applied for the registration of the word mark CONTINENTAL for the abovementioned goods and services. The examiner refused registration of the mark and Continental Bulldog Club lodged an appeal. The First Board of Appeal of OHIM rejected the appeal, finding that CONTINENTAL was descriptive for the goods and services claimed and that it lacked distinctive character (Articles 7(1)(c) and (b), respectively, of the Community Trademark Regulation (207/2009)).
Continental Bulldog Club appealed to the General Court. In support of its action, Continental Bulldog Club mainly argued that the board had erred in finding that the word mark CONTINENTAL was descriptive of the goods and services concerned.
The General Court fully agreed with the arguments of the Board of Appeal and dismissed the action based mainly on the following aspects.
First, the court took into account the “higher” level of attention of the relevant public. The Board of Appeal had correctly defined the relevant public and its level of attention, finding that the goods and services at issue were targeted in equal part at average consumers in general, such as animal lovers, and professional environments, such as dog breeders or pet shop owners. Therefore, the board was correct in finding that the level of attention was “higher”, given that the relevant public pays particular attention to pedigree, the method of breeding and the characteristics of the dogs, and because these are “goods” which are not purchased every day or services which are not sought after on a daily basis.
Second, the court considered the descriptiveness of the word 'continental'. Following a stringent and full examination of the trademark application (see Libertel (Case C-104/01)), the General Court found sufficient evidence that the term ‘continental bulldog’ could be used, as early as the date of the application for registration, at least by that part of the relevant public made up of professionals, such as dog breeders or pet shop owners, as the designation of a breed of dog recognised in Switzerland.
In particular, the court found that various extracts of internet websites, to which the Board of Appeal had referred, showed that the term ‘continental bulldog’ could designate a breed of dog which was recognised by at least one Swiss cynological federation (SKG) already in 2004, and that the creation and breeding of such type of dog were the goal of the Continental Bulldog Club. It also emerged from the internet pages that the breeders of dogs known as ‘continental bulldogs’ considered them as representatives of a breed ‘in its own right’ which is, or at least tends to be, constantly improving. The characteristics of the Swiss breed of dog were set out in the aforementioned extracts of internet pages, as well as a comparison with the recognised breed of ‘English bulldogs’.
Further, it was irrelevant that only the short form of 'continental bulldog', namely CONTINENTAL, was applied for. This term was found to be sufficiently evocative and it was not proven that the relevant public would not understand, without an indication of ‘type’, which breed of dogs was at issue when confronted with terms such as ‘Jack Russell Terrier’, ‘Airedale Terrier’, ‘Cocker Spaniel’, or, in the present case, ‘Continental Bulldog’.
It was also irrelevant that the word ‘continental’ has various meanings as - in light of Wrigley (Case C-191/01 P) - at least one of its potential meanings was directly understood by the relevant public as a description of a breed of bulldogs or, in relation to the services targeted, as a specification insofar as it concerned dogs of that same breed.
In addition, the court rejected Continental Bulldog Club's argument that the breed of dog 'Elo' had already been registered as a Community trademark and that OHIM had followed a different registration practice in the past. Contrary to the present application for CONTINENTAL, it had not been proven that the ‘Elo’ breed was recognised by the SKG or by a comparable cynological association, nor that relevant consumers were made aware of it as a new breed of dog in its own right.
The decision is mainly based on factual evidence and on established case law (Libertel and Wrigley). It is convincing, as the relevant consumers are specialised and it is likely that the term 'continental bulldog' or 'continental' used for the goods and services applied for would be perceived as a reference to a breed of dog. Arguably, a trademark monopoly on a type of breed of dog recognised by cynological organisations should be avoided.
Florian Schwab, Boehmert & Boehmert, Munich
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