Decision annulled due to flawed examination by OHIM

European Union
In Européenne de traitement de l’information (Euro-Information) v Office for Harmonization in the Internal Market (OHIM) (Case T-15/09, March 9 2010), the General Court has overturned a decision of the Board of Appeal of OHIM in which the latter had found that the mark EURO AUTOMATIC CASH was devoid of distinctive character.

Européenne de traitement de l’information (Euro-Information) filed an application for the registration of EURO AUTOMATIC CASH as a Community trademark (CTM) in October 2004 for a range of goods and services in Classes 9, 35, 36, 37, 38 and 42 of the Nice Classification, many of which had a financial nature. In November 2005 the examiner rejected the application under Article 7(1)(b) and Article 7(2) of the Community Trademark Regulation (40/94) for lack of distinctive character in part of the European Union. 

On appeal, the Fourth Board of Appeal upheld the decision. It held that, based on the perception of English-speaking consumers in the European Union, each of the three words in the mark had a direct meaning in relation to the goods and services:
  • 'euro' referred to the EU currency;
  • 'automatic' referred to a self-operating mechanism, a process achieved by such a mechanism or even a process conducted by machines without human intervention; and
  • 'cash' referred to money. 
Accordingly, the mark described essential characteristics of the goods and services, namely that they facilitated either a direct payment in euros or obtaining cash in euros automatically. Therefore, it was unregistrable under Articles 7(1)(b) and (c). 

Euro-Information appealed to the General Court and asked it to register the mark. The General Court made a preliminary statement in this respect, holding that this part of the appeal was inadmissible: it could not require OHIM to take such action because OHIM had to act on the basis of conclusions in General Court judgments.
With regard to Article 7(1)(c), Euro-Information:
  • argued that the fact that the components of the mark were immediately identifiable did not make the mark descriptive;
  • disputed the meanings that the Board of Appeal had attributed to the components; and
  • stated that the fact that the mark had several meanings showed that it was not descriptive. 
It also argued that the correct interpretation of the mark was 'automatic cash in euros' ('espèce automatique en euro'), which had no meaning per se and was, in relation to financial services, at worst evocative. Therefore, it was suitable for registration as a CTM.

With regard to Article 7(1)(b), Euro-Information stated that the board had deduced the lack of distinctive character of the mark without providing any arguments or concrete evidence that the mark was incapable of distinguishing Euro-Information’s products and services from those of competitors. It added that, where a mark contains two elements which are at worst evocative and an element which is arbitrary, it has the minimum requisite distinctive character.

OHIM submitted that:
  • 'cash' could mean 'immediate payment';
  • 'automatic' preceding 'cash' would be perceived as an adjective denoting an automatic operation effected without human intervention; and
  • 'automatic cash' was currently used in English-speaking countries in relation to cash machines.
It concluded that, following consideration of the connection between the mark and the goods and services, the mark was descriptive and thus unregistrable under Article 7(1)(c).

The court stated that it should first examine Euro-Information’s arguments relating to lack of descriptive character because the board had essentially based its refusal on Article 7(1)(c), adding that it had to examine only whether there was a sufficiently direct and concrete link between the mark and the goods and services to enable the public to perceive their nature as a result of one of their characteristics. It added that it had to consider the mark as a whole when conducting this exercise.

The court then set out the following relevant issues:
  • The relevant public was composed of English-speaking consumers in the European Union.
  • The three elements making up the mark were English words comprehensible to this public.
  • This public would interpret the words as having the meanings set out above. 
As these issues were not contested, it stated that its examination of the present appeal would be based on them.

Considering the meaning of the words, the court concluded that it had been appropriate for the board to find that the relevant consumers would consider the mark to refer to an automatic direct payment in euros or to obtaining euros in cash automatically. Unsurprisingly, it added that the fact that the mark could have two meanings did not preclude refusal under Article 7(1)(c) because only one meaning has to be descriptive in order for this to be applicable. Further, it reiterated that OHIM was not obliged to consider all of the goods and services covered by an application, but only each category thereof.

The court stated that the board had made a global appreciation in relation to all of the goods and services of the application. The court felt that the board had acted incorrectly because it was not apparent that the mark was bound to all of the goods and services to the same extent. For example, the expression 'euro automatic cash' was, in the court's view, connected a priori to cash machines, but clearly not in a direct and concrete manner to legal services in Class 42.

The court felt that this stance was supported by OHIM’s submissions in response to the appeal, in which the latter had distinguished at least four types of connections between the different categories of goods and services and the meanings stated by the board. OHIM had also, in the court’s view, explicitly admitted that the mark was less descriptive for some categories of goods and services than for others. However, the board had not made any such distinction in the contested decision and the analysis conducted by OHIM in its response to the appeal could not make amends for the lack of examination in this regard in the contested decision.

Accordingly, the court concluded that the board had contravened Article 7(1)(c) because it had not examined each category of goods and services in accordance with settled case law and, to the extent that the board's conclusion that the mark was devoid of distinctive character was based solely on its descriptive character, the invocation of Article 7(1)(b) was tainted by this same error.

The court thus overturned the board's decision, ordering OHIM to pay 80% of the costs and Euro-Information to pay the remaining 20%. It also ordered OHIM to pay Euro-Information’s unrecoverable fees before the board.

It will be interesting to see how this application now progresses, in the light of a flawed examination by OHIM at first instance and on appeal. The mark should be registrable prima facie for services such as legal services, but it seems unlikely that, without substantial evidence of acquired distinctiveness, it will be accepted for the more pertinent goods and services. Euro-Information has also appealed against OHIM’s refusal of a later CTM application for EURO AUTOMATIC PAYMENT, and a presumably adverse Board of Appeal decision has been appealed to the General Court.

Chris McLeod, Hammonds LLP, London

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