General Court considers combination of descriptive and laudatory terms

European Union

In Bayerische Motoren Werke AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-145/12), the General Court has upheld the decision of the Fourth Board of Appeal of OHIM to refuse registration of Bayerische Motoren Werke AG (BMW)'s trademark ECO PRO due to a lack of distinctive character under Article 7(1)(b) of the Community Trademark Regulation (207/2009).

Prior to reaching the General Court, the case had already been decided against BWM by both the OHIM examiner and the Board of Appeal. The board held that the mark would be perceived as the combination of two common abbreviations: ‘ecological’ or ‘ecology’ on the one hand, and ‘professional’ or ‘supporting’ on the other. Therefore, the mark could be used to describe a variety of goods that are, among other things, environmentally friendly and designed for professional use. In other words, the mark was devoid of any distinctive character for the relevant goods, which included motor vehicles in Class 12 and electronic apparatus in Class 9 of the Nice Classification.

On appeal before the General Court, BMW argued that the elements 'eco' and 'pro' did not have an obvious meaning, regardless of whether they were viewed alone or in combination. Therefore, the relevant public would be incapable of immediately determining the precise meaning of the sign in relation to the goods covered by the application. In addition, BMW argued that there were other possible interpretations of the mark in relation to the goods at hand.

The issue to be determined by the General Court was whether the association between the semantic content of the mark and the goods in question was sufficiently concrete and direct to allow the conclusion that the relevant public would immediately be able to identify certain characteristics of those goods. The General Court followed settled case law and noted that, while the elements of the mark may be examined separately, the assessment of distinctiveness must in any event depend on the whole which they comprise.

Regarding the separate elements 'eco' and 'pro', the General Court cited its own previous case law and found that the Board of Appeal had not erred in its conclusions regarding how consumers would understand the two abbreviations. The General Court noted that the word element ‘pro’ may also be a laudatory term typically used in advertising to highlight the positive qualities of goods.

Overall, the combination of the descriptive term ‘eco’ and the laudatory term ‘pro’ was found to represent nothing more than the sum of its part. The term ‘pro’ tended to simply reinforce the characteristics evoked by the element ‘eco’. Based on previous case law, the General Court also found that the structure of the mark (ie, a laudatory term placed after a descriptive element) was typically employed in advertising language. The relevant public would therefore perceive the semantic content of the mark as providing information on certain characteristics of the goods, rather than their commercial origin.

All in all, the General Court made fairly short work of the appeal, citing cases dealing with the issues raised by BMW. This decision thus reaffirms the General Court's reluctance to allow the registration of abbreviations of generally laudatory or descriptive terms. Whether this strict approach will continue to be followed remains to be seen, since the Court of Justice of the European Union (ECJ) has often proved to be somewhat more lenient in allowing the registration of trademarks that are suggestive or allusive to some extent.

In fact, further guidance from the ECJ would be welcome concerning whether highly allusive trademarks, such as the one at hand, pass the threshold of minimum distinctiveness. While it is fairly clear that the elements of the ECO PRO mark are perceived separately as abbreviations of common laudatory or descriptive terms, it is also clear that the combination of the two tems is by no means a phrase that would be used, in a natural and practical way, as a standalone description of the characteristics of the goods. Even though the public undoubtedly understands that the mark hints towards certain desirable characteristics, one could argue that a mere hint is not sufficient to render a mark entirely devoid of distinctive character, where the mark as a whole is not commonly used to express those characteristics.

Jukka Palm and Kristian Sjöblom, Berggren Oy Ab, Helsinki

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