ECJ confirms that mark descriptive of component can be descriptive of product itself

European Union

In BSH Bosch und Siemens Hausgeräte GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case C-126/13 P, July 10 2014), the Second Chamber of the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court in which the latter had considered that the word mark ECODOOR was descriptive of a characteristic of a component incorporated in the products at issue and, therefore, was descriptive of the products themselves.

On July 8 2010 BSH Bosch und Siemens Hausgeräte GmbH, a Munich-based manufacturer of home appliances and one of the leading companies in that sector worldwide, applied for the registration of the word mark ECODOOR for machinery and equipment goods in Classes 7, 9 and 11 of the Nice Classification, such as electrical household and kitchen machines, apparatus for baking, toasting or defrosting or drying apparatus. The OHIM examiner refused the application, considering that the mark was descriptive of the goods and that it lacked distinctive character (under Article 7(1)(c) and (b), respectively, of the Community Trademark Regulation (207/2009)).

The First Board of Appeal of OHIM rejected BSH's appeal, holding that the relevant public, which was made up of English-speaking consumers, perceived the mark as meaning “a door the construction and mode of operation of which are ecological”. Therefore, the mark applied for provided information as to the energy efficiency and ecological character of the goods, and thus as to their intended purpose and nature. Consequently, the mark was devoid of any distinctive character.

BSH filed an action with the General Court. The General Court agreed with the Board of Appeal as to the descriptive character of ECODOOR in the sense of Article 7(1)(c). Therefore, it rejected BSH's first plea as unfounded and did not have to examine the second plea alleging infringement of Article 7(1)(b).

BSH filed a further appeal to the ECJ, putting forward the same two pleas in law. The ECJ dismissed the appeal.

With regard to descriptiveness under Article 7(1)(c), the ECJ rejected BSH’s argument that the General Court had wrongfully concluded that a sign that is descriptive of the characteristic of a component in a product could also be descriptive of the essential characteristics of the product itself. According to BSH, the relevant public would not necessarily consider the characteristics of a door - a component of the product - as the essential characteristic of the product itself. The ECJ, however, referring to the non-exhaustive list of characteristics in Article 7(1)(c) to determine the descriptiveness of a trademark, emphasised that a characteristic of a component of a product could also form a significant characteristic of the product as a whole and, thus, be one of the characteristics covered by Article 7(1)(c). The ECJ found that, in its contested decision, the General Court had rightfully determined that the ecological qualities of a door are important for the ecological character of products such as those covered by the application.

Moreover, the ECJ underlined that it was undisputed that the goods covered by the application contained doors or could be equipped with them. The ECJ also backed the General Court’s finding that, although the mark applied for could have several potential meanings, all possible interpretations referred to the fact that the products covered by the mark have an ecological character because of the qualities of the door with which they are equipped. In any case, the ECJ stressed that the assessment of the General Court's findings of facts did not fall within its jurisdiction.

The ECJ did not see any need to examine the second plea alleging infringement of Article 7(1)(b) (lack of distinctive character), as the application had already been rejected based on one of the absolute grounds enumerated in Article 7(1).

The decision does not come as a surprise. It is convincing with regard to the consideration that the characteristics of a component forming an essential characteristic of the product itself can lead to the descriptiveness of the product as a whole. The decision is also in line with the general tendency of the EU courts to take a stricter approach to the assessment of descriptiveness, resulting in a less liberal practice concerning the registrability of signs as Community trademarks.

Florian Schwab, Boehmert & Boehmert, Munich

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