Dentists will assign to the word 'exam' the meaning it has in a medical context

European Union

In Kaltenbach & Voigt GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-242/11, March 29 2012), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that the mark 3D EXAM did not possess distinctive character under Article 7(1)(b) of the Community Trademark Regulation (207/2009).

Kaldenbach & Voigt GmbH obtained an international registration for the figurative mark 3D EXAM, depicted below, for "X-ray apparatus for dental purposes". 

It then applied for registration of the mark as a Community word mark. The examiner and the Board of Appeal of OHIM refused protection of the mark in the European Union under both Article 7(1)(b) (lack of distinctive character) and Article 7(1)(c) (descriptiveness) of the Community Trademark Regulation. Kaldenbach appealed to the General Court.

In respect of the test under Article 7(1)(c), the court considered whether, from the viewpoint of the public - defined here as a specialist public consisting of dentists, including orthodontists - there was a sufficiently direct and specific relationship between the mark 3D EXAM and the goods in respect of which registration was sought.

The court noted that the first element ‘3d’ designates a three-dimensional effect, while the second element ‘exam’ refers to a detailed inspection. According to the court, dentists confronted with X-ray apparatus for dental purposes identified by the mark 3D EXAM would assign to the word element ‘exam’ the meaning it has in a medical context. Therefore, the mark would be directly understood by the relevant public as a description of the goods for which it is registered.

The court then pointed out that, when a mark is unregistrable under Article 7(1)(c), it is - in the absence of specific reasons to the contrary that were not submitted in this case - necessarily devoid of any distinctive character with regard to the same goods or services under Article 7(1)(b).

Finally, the court confirmed established case law that neither the courts of the European Union nor OHIM are bound by decisions adopted by a court in a EU member state or a third country, finding a mark to be registrable as a national trademark.

The General Court thus dismissed the action.

Paul Steinhauser, Arnold + Siedsma, Amsterdam

 

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