EUROHYPO is devoid of distinctive character, says ECJ

"EUROHYPO is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed."

• Article 74(1) requires OHIM to carry out in-depth analyses when considering whether there are grounds for refusing registration. However, OHIM had restricted itself to an analysis of the descriptive character of the individual components 'euro' and 'hypo'.
• OHIM had misrepresented the facts by concealing the results of internet research.
• The CFI had erred in law by holding that the absence of references to internet research in relation to the descriptive character of the mark EUROHYPO was not contrary to Article 74(1).

With regard to the second plea, Eurohypo argued that the CFI had erred in law in its interpretation of Article 7(1)(b) of the regulation in that it had:

• failed to take into account the overall impression produced by the trademark EUROHYPO; and
• incorrectly interpreted the criteria for refusal of registration set out in Articles 7(1)(b) and (c).

The ECJ rejected Eurohypo's first plea in law as inadmissible. However, it partly accepted the second plea in law and set aside the judgment of the CFI inasmuch as the CFI had held that OHIM did not infringe Article 7(1)(b). The ECJ held that the CFI had applied a criterion that was relevant in the context of Article 7(1)(c), but could not form a basis for the interpretation of Article 7(1)(b) (see BioID v OHIM (Case C-37/03 P)).

The ECJ chose to give final judgment in the matter itself (in accordance with Article 61 of the Statute of the Court of Justice) and held that the mark EUROHYPO does not have a distinctive character for the purposes of Article 7(1)(b). In support of its decision, the ECJ held as follows:

• For a trademark to possess a distinctive character within the meaning of Article 7(1)(b), it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking; 
• OHIM correctly stated that the relevant public - the average German-speaking consumer, reasonably well informed and reasonably observant and circumspect - understands the word mark EUROHYPO as referring, as a whole and in general, to financial services requiring real securities and, in particular, to mortgage loans paid in the currency of the European Economic and Monetary Union;  
• There is no additional element which would allow the view to be reached that the combination created by the current and usual components 'euro' and 'hypo'  is unusual or might have its own meaning which, in the perception of the relevant public, distinguishes the services offered by Eurohypo from those of a different commercial origin; and 
• The relevant public perceives the trademark EUROHYPO as providing details of the type of services which it designates and not as indicating the origin of those services.

Therefore, the ECJ dismissed the action against the decision of OHIM and ordered Eurohypo to pay the costs of the proceedings at both instances. 

Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Federspiel Kierkegaard, Arhus