General Court: CTM applications for promotional marks must be more than simple and banal

In Intervog v Office for Harmonisation in the Internal Market (OHIM) (Case T-190/15, November 24 2015), the General Court has again considered the registrability of slogan-type marks, confirming the difficulty in registering them.

In July 2013 Intervog applied to register the figurative mark depicted below for goods and services in Classes 9, 38 and 45 of the Nice Classification, with a communications/social networking emphasis.

In August 2013 the examiner raised an objection to the application under Article 7(1)(b) of the Community Trademark Regulation (207/2009), stating in particular that the mark would not be perceived as an indicator of source but as having a promotional or advertising nature. Intervog argued in reply that:

• the mark was sufficiently original to fulfil the function of a trademark;
• it must be considered in its entirety; and
• several other marks including or consisting of the words 'meet me' had previously been registered by OHIM.

In a decision issued in January 2014, the examiner maintained the objection and refused the application on the grounds that the mark consisted of two English words whose semantic content was sufficiently clear and precise and gave rise to a grammatically correct combination of words which clearly indicated that the goods and services in question enabled consumers to meet, find each other or become acquainted.

In March 2014 Intervog appealed against the decision and, in February 2015, the Fourth Board of Appeal of OHIM rejected the appeal, stating that the mark conveyed a simple and banal promotional message. It added that the elements other than the words, namely the colour blue, the font, the inversion of the letter 'e' and the lack of space between the words, were insufficient to give the mark distinctive character or to contribute sufficiently to this.  It concluded that the expression “meet me”, even presented in a semi-figurative form with banal graphical elements, could only be perceived as a promotional message which did not constitute a play on words and did not contain any imaginative, surprising or unexpected elements which would give it distinctive character. The Board of Appeal also rejected the argument based on other registrations in the customary manner, namely that each application must be examined on its own merits.

The General Court agreed in essence with the examiner and the Board of Appeal. It held that a mark consisting of an advertising slogan must be considered devoid of distinctive character if the relevant public would only perceive it as a simple slogan and that, by contrast, a mark of this nature must have distinctive character if, in addition to its promotional function, it can be perceived as source indicator.

It agreed with the examiner and the Board of Appeal that this mark would only be perceived as promotional and not as conveying any message beyond that of the products and services facilitating meetings between consumers through IT tools. It then confirmed at length that the mark possessed no originality.

With regard to the argument relating to a family of marks with a similar form, to which Intervog claimed that the Board of Appeal had not replied, the court stated that the Board of Appeal had addressed this issue by stating that these marks were not the subject of the application.

The court concluded that the mark was devoid of distinctive character, rejected the appeal and awarded costs against Intervog.

Intervog has previously succeeded in registering as a Community trademark (CTM) a similarly stylised version of the mark 'date me' for essentially identical goods and services. However, as this case emphatically confirms, each application is considered on its own merits, and in the absence of evidence of acquired distinctiveness or greater inherent distinctiveness, it will generally be a struggle to register any CTM application which can be interpreted as essentially or primarily promotional.

Chris McLeod, Elkington & Fife LLP, London