General Court: descriptive mark in cursive script is not registrable

In Mo Industries LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-203/14, May 21 2015), the General Court has come to the interesting conclusion that a trademark shall not be deemed registrable if it is descriptive and devoid of any distinctive character, even if it is written in a characteristic script - for instance, in the following form:

There is no doubt that the word 'splendid' is a word of the general English language which is to be considered as descriptive and laudatory for almost all products and services, and which, as such, lacks distinctive character. However, there are innumerable Community trademarks (CTMs) consisting of words of the general language which can be used in connection with most goods and services, or at least with the goods and services for which the trademark is registered; these CTMs have been registered on the ground that the distinctive character of the trademark can be based on its specific graphic representation and, in many cases, on a particular script form. However, it seems that this is no longer true.

In the present case, the General Court confirmed the finding of the First Board of Appeal of OHIM that “the typeface used, although stylised, cannot divert the consumer’s attention from the clear message conveyed by the term 'splendid'” (Paragraph 24). The General Court added that the cursive script is an ordinary and traditional style which is used by both children and adults, and which remains unremarkable from the perspective of any consumer. If one pushes this argument further, this implies that any form of handwriting - even if it is quite specific and characteristic - will not be able to justify the registration of a descriptive sign as a trademark.

In this connection, the question is to what extent, during the examination procedure, the General Court sets forth the issues that could arise in a latter infringement action. During infringement proceedings, the courts would have to disregard the fact that a similar trademark uses the same handwriting because such characteristic handwriting has been considered to lack distinctiveness. This seems to deviate from the general practice, at least in several European countries.

An additional aspect of the case at hand was that the dot on the letter 'I' in the trademark SPLENDID is registered as a separate trademark (CTM No 10504652):

This means that the dot alone, which can be found in the trademark SPLENDID, is a characteristic and distinctive trademark; however, it seems that the descriptiveness of the word 'splendid' would remove any distinctive character from this trademarked element and would not justify the registration of the word as a whole.

The decision also contains an interesting clarification made by the General Court: the laudatory connotation of a word trademark does not necessarily mean that it cannot serve to guarantee the commercial origin of the goods or services which it covers. Therefore, even though the relevant public might recognise a trademark as having a laudatory meaning for the products or services involved, this does not necessarily mean that the trademark would not be capable of fulfilling its function of guaranteeing the commercial origin of the products or services at issue. Consequently, if OHIM were to take the position that a trademark is not capable of guaranteeing the commercial origin of the products or services, a reference to the laudatory meaning of the trademark alone would not be sufficient.

It will be interesting to see how far the approach followed by the court in this case will be taken - if one takes only the word(s) into account, and disregards the graphic presentation as long as it is easily readable by the average consumer, the absolute grounds for refusal (descriptiveness and lack of distinctiveness) will apply in many cases where trademarks have been registered in the past without any problems.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna