General Court confirms lack of distinctiveness of dotty CTMs

European Union

In EE v Office for Harmonisation in the Internal Market (OHIM) (Cases T-77/14, T-94/14, T-143/14 and T-144/14), the General Court has upheld the decisions of OHIM and its Board of Appeal to refuse registration of four applications for figurative trademarks consisting of a pattern of white dots on a coloured background (grey, aqua blue, yellow and ivory, respectively, each defined as a specific Pantone shade).

 

The applications were all refused under Article 7(1)(b) of the Community Trademark Regulation (207/2009), on the basis that they were devoid of distinctive character. In its appeal to the General Court, applicant EE Ltd (the mobile network operator and ISP) argued that OHIM had made three errors in reaching its decision:

  1. The Board of Appeal failed to assess the signs as a whole;
  2. The Board of Appeal did not consider its objection against the goods and services individually;
  3. The Board of Appeal failed to consider the applicant’s evidence concerning the perception of the relevant public.

In its first complaint, EE argued that the board had assessed the various elements of the sign individually. It concluded that the background colour lacked distinctiveness, as did the colour white, as did the pattern of dots.  From this, the board reasoned that, since each of the elements by itself lacked distinctive character, then the combination of those elements was likewise non-distinctive.

The General Court dismissed this claim. Where a sign is composed of a number of features, each of which is non-distinctive, then an analysis of the individual elements is a necessary step in the overall assessment. The Board of Appeal’s assessment that each element of the signs applied for lacked distinctiveness was correct.

Having reached this conclusion, the board was right to conclude that “the combination of those features, taken as a whole, [was] a priori not distinctive in itself”. The General Court said case law makes it clear that marks made up of non-distinctive features will, generally, lack distinctive character, unless concrete evidence to the contrary is presented. The applicant supplied no evidence that the marks applied for were “unusual” or “particular”.

In its second complaint, EE argued that the Board of Appeal should have distinguished between all the individual goods and services applied for, when assessing distinctive character. This claim was also dismissed.

The General Court confirmed that it was clear from the reasoning and grounds relied on by the board that the signs were devoid of distinctive character for all goods and services claimed. Moreover, the competent authority is permitted to group goods and services into broad categories and apply general reasoning, provided the grounds for refusal were carried out in relation to all goods and services.

In this case, the Board of Appeal detailed the different groups into which the goods and services applied for could be categorised, and assessed distinctive character in respect of as many of them as possible.

EE’s final complaint argued that it had provided evidence that mobile operators and ISPs have adopted use of colours as indications of origin and, consequently, the consumer is attuned to such signs performing a trademark function. 

The General Court again dismissed this. The evidence provided merely showed that colour (usually accompanied by a logo or wording) is used for promotional or advertising purposes. According to the General Court, colours “possess little inherent capacity for communicating specific information”. The widespread use of two standard colours means they are not per se capable of indicating brand origin.

The appeal was dismissed.

These cases are another demonstration of the problems faced by applicants seeking to register non-conventional marks. Trademark law does not differentiate between different types of sign or apply different registrability criteria.  However, as the General Court pointed out in these cases:

the perception of the relevant public is not necessarily the same... While the public is accustomed to perceiving word or figurative marks as instantly identifying the commercial origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which registration of the sign is sought”. 

Absent evidence, therefore, applications for such marks are likely to face an uphill battle for registration.

Chris Morris, Burges Salmon LLP, Bristol

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