FRESHHH held to be descriptive of food and drinks

European Union

In En Route International v Office for Harmonization in the Internal Market (OHIM) (Case T-147/06, November 26 2008), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had held that the mark FRESHHH was descriptive in relation to goods in Classes 29, 30 and 32 of the Nice Classification.

In March 2003 En Route International Limited applied for the registration of the mark FRESHHH as a Community trademark (CTM) for the following goods:
  • "meat, fish, poultry and game, meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes and milk products (yoghurt, butter, cheese)" in Class 29;
  • "bread, bread rolls, meat and/or fish and/or poultry and/or game and/or sausage and/or cheese sandwiches, pastry and confectionery, salad dressings" in Class 30; and
  • "non-alcoholic drinks; fruit and vegetable juices, whey-based beverages, aerated waters, lemonades" in Class 32.
In February 2005 the OHIM examiner decided that the mark was descriptive of the relevant goods and refused registration. In March 2006 the Fourth Board of Appeal agreed with the examiner, taking the view that the average consumer would perceive the mark as being descriptive of a quality (ie, the freshness) of the relevant goods.
En Route appealed to the CFI. It did not challenge the finding that the word 'fresh' was descriptive of the relevant goods. However, it sought to distinguish the mark FRESHHH from the word 'fresh' as used in the English language.
First, En Route tried to split the mark into its 'fresh' component and its ending 'shhh', arguing that this composition rendered the mark visually and phonetically distinctive and non-descriptive. En Route argued that consumers would:
  • distinguish the FRESHHH mark from the descriptive word 'fresh'; and
  • think not of freshness, but of the sound of packaging or a lid being opened.
The CFI agreed with the Board of Appeal that the addition of 'hh' at the end of the word 'fresh':
  • was insufficient to make the mark appear to consumers as anything other than a variation on the word 'fresh'; and
  • failed to disassociate the mark from the concept of freshness in the consumer’s mind.
The CFI held that it did not have to decide whether the mark was distinctive, as the fact that it was descriptive constituted an absolute ground for refusal of registration.
The CFI also rejected the argument that FRESHHH was not a word used in the English language. It stated that the mark did not need to have a specific meaning or be used in a language in order for it to be descriptive, as Article 7(1)(c) of the Community Trademark Regulation (40/94) requires only that the mark may serve, in trade, to designate the kind and quality, among other things, of the relevant goods or services. In addition, the examiner had adduced evidence (from internet searches) showing that the word 'fresh' with the addition of one or more 'Hs' at the end had been used to suggest freshness.
The CFI also noted the Board of Appeal’s reasoning that wrongly spelled words were commonly used in everyday life and that this would not have an impact on the consumer’s perception of the mark.
Finally, the CFI rejected the argument that the mark FRESHHH had been previously used and registered. The CFI reiterated that the CTM regime is independent from national laws and decisions. Although decisions invoked by En Route may have supported its arguments, the CFI found that En Route had failed to provide sufficient detailed evidence that the national authorities had considered the relevant questions and decided that the mark should be registered. As regards previous decisions of OHIM in relation to the registration of similar marks, the CFI reiterated that OHIM is not bound by its previous decisions and that each of its decisions must be assessed solely on the basis of the regulation.
Finally, En Route sought to rely on the fact that FRESHHH had been used as a trademark in relation to clothing. The CFI held that this was irrelevant, as the word 'fresh' was not descriptive with regard to clothing.
In many decisions relating to the descriptive character of a mark, the CFI has stated the policy reason for the refusal of descriptive marks as the public interest in descriptive words and signs remaining available for all to use. En Route argued that there was no public interest in the grammatically incorrect term 'freshhh' remaining available for use. The CFI did not specifically address this argument, thereby indicating that it would apply Article 7(1)(c) strictly and regardless of any underlying policy purpose that this provision may have.
Marine Baudriller, Hammonds LLP, London

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