Decision highlights General Court’s tendency to consider purpose of goods

European Union
In Hamberger Industriewerke GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-513/10, January 17 2012), the General Court has rejected an appeal against the refusal of a Community trademark (CTM) application on the basis of its descriptiveness of the purpose of the goods in the application.
In February 2009 Hamberger Industriewerke GmbH applied to register the word mark ATRIUM as a CTM for construction and flooring goods in Classes 19 and 27 of the Nice Classification.
In December 2009 the OHIM examiner rejected the application under Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009) on the basis that the mark was descriptive of the goods and lacked distinctiveness. The applicant appealed.
In August 2010 the Fourth Board of Appeal of OHIM rejected the appeal. The board’s reasoning was as follows:
  • The word 'Atrium' was an ancient Roman term for the main or central room of a building and, in modern day, an interior courtyard, either open-air or with a glazed roof or enclosed garden, which would be understood by the public to be descriptive of the goods in the application, being building materials and flooring which might be used to construct or convert an atrium; and
  • Since it was descriptive, the mark lacked distinctiveness.
The applicant appealed to the General Court, alleging a violation of Articles 7(1)(b) and (c).

The court outlined the facts that were not at issue. It was not challenged that:
  • the goods in the application were building materials and flooring used by consumers and professionals;
  • the word ‘atrium’ was used in both English and German; and
  • the word ‘atrium’ meant a central room in a Roman-style house, as well as an interior skylit courtyard.
The court agreed with the Board of Appeal that building materials and flooring might be used to build a central room or an interior courtyard. The court considered that interior courtyards would often contain some type of flooring.

The court disagreed with the applicant that ‘atrium’ described a specific part of a building, not the materials used in its construction. The court, relying on existing case law, held that a mark would be considered descriptive if it described a characteristic of the goods, and the purpose of the goods was one of its characteristics.

The court held that, as the word ‘atrium’ indicated the purpose of the goods in the application, there was a sufficiently direct and concrete link between the mark ATRIUM and the goods, which would make the relevant public immediately understand that it referred to their characteristics. Accordingly, the court confirmed that the mark was descriptive under Article 7(1)(c).

The court rejected each of the applicant’s arguments in full. First, the applicant submitted that the word ‘atrium’ had other meanings which were not descriptive of the goods. The court reiterated existing principles that a single descriptive meaning would be sufficient for an application to fail.

Second, the applicant submitted that the board was not permitted to base its decision on a hypothetical consideration of the purpose of the goods. The court again disagreed, highlighting that it was not necessary that the words comprising the mark were used for descriptive purposes, but that they might be used for such purposes.

Third, the applicant submitted that, if the board’s decision was correct, the word ‘atrium’ would not only be descriptive of materials for constructing walls, ceilings and floors, but would also be descriptive of any material used to construct an atrium, which would mean that it was descriptive of an entire range of goods. The court held that whether or not ‘atrium’ was descriptive of other goods did not affect the lawfulness of the decision in question.

As the application could be refused for descriptiveness, the court did not need to consider Article 7(1)(c).

This decision may be disappointing for trademark owners, as it confirms the General Court’s propensity to consider the purpose of the goods in an application in order to determine whether a mark is descriptive. This increases the risk of refusal, as goods (especially, as proven by the case in point, building materials) can often be used for many different purposes.

Ellie Forrest-Charde and Chris McLeod, Squire Sanders (UK) LLP, London

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