Decision shows importance of considering possible existence of specialised sub-group among relevant public
In Research Engineering & Manufacturing Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-558/14), the General Court has dismissed Research Engineering & Manufacturing Inc's (RE&M) appeal against a decision of OHIM. RE&M argued that the Fourth Board of Appeal of OHIM had wrongfully declared that the word sign TRILOBULAR was invalid due to a lack of distinctive character.
The Community trademark TRILOBULAR was registered on April 26 1999 for metal threaded fasteners (screws) in Class 6 of the Nice Classification. On December 30 2011 Dutch company Nedschroef Holding BV filed an application for a declaration of invalidity of the trademark based on Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009) (ie, lack of distinctive character and descriptiveness).
In its decision of January 18 2013, the Cancellation Division of OHIM rejected Nedschroef's application.
On March 5 2013 Nedschroef filed an appeal, which was upheld. Among other things, the Board of Appeal considered that:
- the relevant public consisted of the general consumer and a professional public, either German-speaking or Anglophone; and
- evidence showed that, since 1982, the word 'trilobular' described the nature, technical function and shape of the cross section of the screws at issue.
Consequently, the Board of Appeal found that the trademark was descriptive of the characteristics of the goods and that it was necessarily devoid of distinctive character.
RE&M appealed this decision. It put forward a single plea in law. The General Court denied this plea and upheld the decision of the Board of Appeal.
First, the General Court established that the Board of Appeal had not erred in law when examining if part of the relevant public, namely professionals, would consider the contested mark to be descriptive. According to Heede v OHIM (Case T-313/11), OHIM is entitled to take account of the presence, within the general public, of a narrower class, composed of persons to whom the goods or services covered by the mark are particularly intended.
Regarding the word 'trilobular' (composed of the prefix 'tri' and the Latin word 'lobular'), the General Court considered that it referred to the fact that the screws have three lobes. This also followed from the fact that, in German, the words 'trilobularen', 'Trilobularität' and 'Trilobulare' exist with the same meaning. On the basis of the evidence provided, the General Court confirmed that 'trilobular' could already be understood by German-speaking professionals and professionals from other member states as being descriptive of a fundamental characteristic of the screws, before the registration of the trademark.
Second, the General Court confirmed the Board of Appeal's finding that the trademark described the shape of the cross section of the screws. The link between trademark and shape would be understood by the public that is the aware of the words 'trilobularen', 'Trilobularität' and 'Trilobulare'.
Finally, the General Court held that, in the present case, the trademark had a specific meaning on the technical level in the light of the goods in question, which necessarily meant that that mark was descriptive of those goods.
This decision underlines the importance of a careful examination and consideration of the possible existence of a specialised sub-group among the relevant public. Furthermore, the decision underlines once again the importance of clearance of any and all possible meanings of an intended mark in national EU languages and, where appropriate, of any technical meanings thereof before applying for a Community trademark.
Sebastiaan Brommersma, DLA Piper, Amsterdam
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