DRESSMART not descriptive for clothing

The Swedish Patent Appeals Court has overturned a decision to refuse the registration of the mark DRESSMART for clothing (Case 01-389). Citing the European Court of Justice's (ECJ) decision in BABY-DRY, it held that when viewed in its entirety the mark was sufficiently distinctive to allow registration.

Dressmart AB, a Swedish company that sells men's clothing on the Internet, applied to register DRESSMART for goods and services in Classes 25 and 35 of the Nice Classification, namely clothes and retail services relating to clothing. The Swedish Patent and Registration Office (PRO) refused registration on the grounds that the mark was descriptive of the relevant goods and services, and it therefore lacked distinctiveness. It held that the mark was composed of either the two English words 'dress' and 'smart' or the two English words 'dress' and 'mart'. The PRO held that the first combination was equivalent to the phrase 'to dress smart', while the second indicated a market where clothes were sold. Either way, said the PRO, the mark was descriptive for clothing and related services.

Dressmart appealed to the Patent Appeals Court and referred to an earlier Community trademark registration as well as an international registration for DRESSMART for the same goods and services. According to Dressmart, the PRO should not have analyzed the different elements making up the mark, instead it should have looked at the mark in its entirety. Dressmart maintained that (i) when viewed as a whole the mark was suggestive rather than descriptive, and (ii) the very fact that DRESSMART had different meanings gave it sufficient distinctiveness.

The Patent Appeals Court upheld the appeal and remanded the case back to the PRO. It cited the ECJ's decision in BABY-DRY in which the ECJ held that a combination of two descriptive words was capable of forming a new and distinctive trademark. The Patent Appeals Court agreed with Dressmart that the PRO should have examined the mark as a whole to determine whether it had sufficient distinctiveness. It also concluded that the mark was suggestive of the relevant goods and services covered by the application, rather than descriptive.

Fredrik Engfeldt, Jonas Gulliksson Advocates Ltd, Malmo