Exclamation mark is not registrable as a trademark, says CFI

European Union
In JOOP! GmbH v Office for Harmonization in the Internal Market (OHIM) (Cases T-75/08 and T-191/08, September 30 2009), the Court of First Instance (CFI) has held that an exclamation mark could not be registered as a trademark.

German clothing and perfume company JOOP! GmbH applied to register two versions of the exclamation mark symbol - one consisting of a simple exclamation mark in black and white, the other consisting of an exclamation mark within a rectangular frame - for goods in Classes 14, 18 and 25 of the Nice Classification (jewellery and clothing). The OHIM examiner rejected the applications on the grounds that the marks were devoid of distinctive character. JOOP! appealed.

The Board of Appeal of OHIM upheld the examiner's decision, stating that given the nature of the goods for which registration was sought, the relevant public would perceive the exclamation mark only as a laudatory or eye-catching element, but not as an indication of the commercial origin of the goods. JOOP! appealed to the CFI.

First, the CFI stated that an exclamation mark is, in principle, eligible for trademark protection as long as it is perceived immediately as an indication of the commercial origin of the goods or services in question. However, in the present case, the consumers - including those having a high degree of attention - would not associate immediately the exclamation mark with JOOP!. The CFI further held that the rectangular frame used in one of the marks did not render the mark distinctive, because placing a mark inside a rectangle (so that it appears as a label) is a common practice in the relevant commercial sector.

Second, the CFI observed that a mark will be said to have acquired distinctive character through use if at least a significant proportion of the relevant public recognizes it as an indication of the commercial origin of the goods or services at issue. In addition, the mark must have become distinctive through use before the application for registration was filed. According to the CFI, it could not be excluded that the marks applied for had acquired distinctive character through use as part of JOOP!'s main trademark (ie, JOOP!). However, the evidence submitted by JOOP! was insufficient because it referred only to the German market. The CFI pointed out that since the marks lacked distinctiveness for all EU consumers, JOOP! had to prove that they had acquired distinctive character throughout the whole of the European Union. Moreover, the CFI found that the evidence - which consisted of three photos showing jeans to which a label with an exclamation mark was attached - was inadequate.

It remains to be seen whether JOOP! will appeal the decision to the European Court of Justice.

Friederike Bahr, Beiten Burkhardt, Munich

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