Decision highlights importance of relevant public's perception
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In Zeta Europe BV v Office for Harmonization in the Internal Market (OHIM) (Case T-464/08, May 19 2010), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had held that the trademark SUPERLEGGERA was descriptive.
On November 10 2006 Zeta Europe BV, a Dutch company involved in the automotive industry, filed an application for the registration of the figurative mark SUPERLEGGERA (meaning 'superlight') as a Community trademark for goods in Classes 12, 18 and 25 of the Nice Classification.
On February 26 2008 the OHIM examiner rejected the application under Articles 7(1)(b) and (c) and 7(2) of the Community Trademark Regulation (40/94) (now Articles 7(1)(b) and (c) and 7(2) of the Community Trademark Regulation (207/2009)). Zeta appealed.
On July 17 2008 the First Board of Appeal of OHIM dismissed the appeal, holding that SUPERLEGGERA lacked distinctive character, since the relevant public - which consisted of Italian and Italian-speaking average consumers and professional consumers - would perceive the mark as identifying a light object and would not associate it with an “laid-back lifestyle”, as claimed by Zeta. Moreover, the board remarked that the graphic elements of the mark were insufficient to render it distinctive. Finally, it rejected Zeta’s argument that OHIM had previously registered similar marks, including SUPERDRY, SUPERFLEX, SUPER DUTY and SUPERLIGHT.
Zeta appealed, requesting that the General Court annul the board's decision on the grounds that it infringed:
- Article 7(1)(b) of Regulation 40/94;
- Article 74 of Regulation 40/94 (now Article 76 of the Regulation 207/2009); and
- Article 73 of Regulation 40/94 (now Article 75 of the Regulation 207/2009).
The General Court pointed out that the absolute grounds for refusal set forth in Article 7(1) of Regulation 40/94 must be interpreted in light of the general interest underlying the provision. The general interest underlying Article 7(1)(b) is the protection of the essential function of the trademark (ie, to guarantee the origin of the goods bearing the mark).
Further, the court referred to established case law, under which the distinctive character of a trademark must be assessed based on:
- the goods and/or services for which the mark is to be registered; and
- the perception that the relevant public has of those goods and/or services.
Therefore, if the relevant public perceives a mark as providing information on the nature of the goods at issue, and not as indicating the origin of the goods, the mark does not satisfy the requirements set forth in Article 7(1)(b).
The General Court found that, in the present case, the relevant public would perceive the mark SUPERLEGGERA as describing a significant characteristic of the goods in question - namely, their lightness. Further, the court considered that, from a visual point of view, the graphic representation of the mark was unlikely to stick in the memory of the relevant public, or to distinguish Zeta's goods from those of others.
With respect to the alleged breach of Article 74, the General Court clarified that OHIM's duty to examine the facts, the evidence and the arguments of the parties must be interpreted narrowly. Therefore, OHIM was not obliged to examine the earlier registered trademarks cited by Zeta in order to decide whether the SUPERLEGGERA mark should be registered.
Finally, with regard to the alleged breach of Article 73, the General Court pointed out that the board had clearly specified the relevant public in its decision. Moreover, the board had singled out several products, among those covered by the mark, for which the relevant public would immediate perceive the term 'superleggera' as being descriptive of a light object.
The General Court thus rejected Zeta’s appeal.
Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan
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