Descriptiveness debate reopened in EUROPREMIUM Case

In Deutsche Post EURO EXPRESS GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has reversed a decision to refuse the registration of EUROPREMIUM as a Community trademark.

Deutsche Post EURO EXPRESS GmbH filed an application with the OHIM to register the mark for goods in Classes 16 and 20 of the Nice Classification, and services in Classes 35 and 39. These goods and services included packaging materials and delivery services. The application was refused on the basis that the mark was (i) devoid of distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation, and (ii) descriptive of the goods and services under Article 7(1)(c). Deutsche Post appealed but the Board of Appeal upheld the refusal on the grounds that the mark was likely to be understood by the average consumer as indicating the quality and origin of the goods and services. Deutsche Post appealed to the CFI.

Deutsche Post argued that the mark EUROPREMIUM had meanings that were not descriptive and as such it should be registered. It also relied on the decision of the CFI in Dart Industries v OHIM. In that case, the court annulled a decision of the board to uphold the refusal to register the mark ULTRAPLUS, finding that the mark was not descriptive but simply extolled the qualities of the relevant goods or services.

The OHIM argued that EUROPREMIUM should not be registered. It contended that where a mark is made up of two descriptive words, it will normally be descriptive. It continued that only if there is a perceptible difference between the resulting mark and the sum of its parts will the mark be registrable. It based this argument on findings in the BIOMILD and POSTKANTOOR decisions. (For further information on these cases, see Neologism comprising descriptive elements is not registrable and POSTKANTOOR pushes BABY-DRY test one step further.)

The CFI first stated that the aim of Article 7(1)(c) is to ensure that descriptive marks can be used freely by all. The marks affected by this provision designate the goods or services in respect of which registration is sought, either directly or by reference to one of their essential characteristics. The CFI rejected Deutsche Post's arguments that the mark was registrable on the basis that it had several possible meanings, some of which were not descriptive. Referring to previous rulings, the court held that it is sufficient that one of the possible meanings of the mark designates a characteristic of the goods or services (see, for example, the DOUBLEMINT Case).

However, the CFI then departed from the OHIM's line of argumentation. In its view, the cases cited by the OHIM did not apply. In the BIOMILD and POSTKANTOOR cases there was no doubt as to the descriptiveness of the elements which made up the marks. The CFI reasoned that this was not the case here. It held that the board, after asserting that EURO was descriptive of the origin of the goods or services, did not demonstrate that geographical origin would be a determinative factor in choosing between the packaging or delivery services of competing companies. On the contrary, it found that delivery services and packaging are not usually chosen on the basis of their geographical origin. It added that while a mark that evokes abstract qualities will have to overcome the potential objection that it is not distinctive under Article 7(1)(b), in order to come within Article 7(1)(c) the mark would need to "designate in a specific, precise and objective manner the essential characteristics of the goods and services in issue". This was not the case in relation to the word 'euro', and the CFI went on to state that the term 'premium' did not inform the consumer of the specific and objective characteristics of Deutsche Post's goods and services.

Accordingly, the CFI held that the board had misapplied Article 7(1)(c) as the mark was not composed exclusively of descriptive elements, and it annulled the decision.

Although this decision favours applicants for Community trademarks, it could be said that the CFI has added a requirement into Article (7)(1)(c) that was not intended. The case may be appealed by the OHIM but, for the moment, it presents applicants with some useful arguments.

Aaron Wood, Hammonds, London