In Ford Motor Co v Office for Harmonization in the Internal Market (OHIM) (Case T-67/07, December 2 2008), the Court of First Instance (CFI) has ruled in favour of Ford Motor Co in a dispute concerning the car maker’s application for the registration of the mark FUN as a Community trademark for goods in Class 12 of the Nice Classification (“land motor vehicles and parts and fittings thereof”).
The CFI reversed a decision of the Third Board of Appeal of OHIM in which the latter had refused to register the mark FUN for the goods in question on the grounds that the mark was descriptive and was devoid of any distinctive character. In essence, the board took the view that the word 'fun' used in connection with land motor vehicles was likely to be perceived as an indication that the vehicles had "a quirky design and were particularly enjoyable to drive". Moreover, the word 'fun' could be used to describe a category of vehicles that were "fun to drive" (eg, rally carts and monster trucks). The board also stated that the word 'fun' was a rather common and basic English word. Therefore, the mark applied for could not fulfil the essential function of a trademark - namely, to identify the origin of the goods.
Interestingly, the CFI’s decision advocates a narrow reading of the absolute ground for refusal set out in Article 7(1)(c) of the Community Trademark Regulation
(40/94). In particular, the CFI held that to come within the scope of this provision, a word mark must serve to designate "in a specific, precise and objective manner" the essential characteristics of the goods and services at issue. The CFI added that:
"the fact that an undertaking wishes to give its goods a positive image, indirectly and in an abstract manner, [...] is a case of evocation and not designation for the purposes of Article 7(1)(c)."
The CFI thus held that the mark FUN was not descriptive of the goods at issue. According to the CFI, the relationship between the word 'fun' (in isolation) and motor vehicles was not sufficiently direct and specific to enable the relevant public immediately to perceive, without further thought, a description of the goods or their characteristics. In this regard, the CFI concluded that the mark FUN did not go beyond suggestion. The CFI further held that the same reasoning would apply to the other goods covered by the application (ie, “parts and fittings” for land motor vehicles), as these goods are inseparably linked to motor vehicles.
In the second part of the decision, the CFI stated that:
- the mere finding that the word 'fun' is a common and basic English word was insufficient to establish that the mark lacked distinctive character; and
- the Board of Appeal had essentially inferred that the mark FUN was not distinctive from the fact that it was descriptive.
The CFI thus annulled the board’s decision.
The CFI’s decision is not final. The OHIM may still appeal to the European Court of Justice based exclusively on points of law.
Enrique Armijo Chávarri, Elzaburu SA, Madrid