General Court: IP ZONE descriptive for IP-related services

In American Express Marketing & Development v Office for Harmonisation in the Internal Market (OHIM) (Joined Cases T-102/11, T-369/12, T-370/12 and T-371/12, March 12 2014), the General Court has upheld decisions of the Second Board of Appeal of OHIM finding that the marks IP ZONE, EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE were descriptive and devoid of distinctive character.

On October 21 2009 and November 1 2010 American Express Marketing & Development Corp applied to register the word marks IP ZONE, EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE as Community trademarks in Class 42 of the Nice Classification in respect of “hosting an online portal for disclosing, selling, buying, licensing and general transactions for intellectual property”. The examiner refused registration of the marks on the basis of Articles 7(1)(b) and 7(1)(c) and Article 7(2) of the Community Trademark Regulation (207/2009).

Article 7(1)(b) of the regulation provides that trademarks which are devoid of distinctive character shall not be registered. Article 7(1)(c) provides that trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, shall not be registered. Article 7(2) provides that Article 7(1) shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

The applicant filed appeals against the decisions of the examiner, but the appeals were dismissed by the Second Board of Appeal. The board held that, as the relevant public was made up of English-speaking professionals in the European Union:

“the marks applied for, taken as a whole, would be understood by the relevant public as meaning ‘a place dedicated to intellectual property’ with respect to the mark IP ZONE and an ‘area devoted to intellectual property in Europe’ with respect to the marks EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE.”

Accordingly, the marks were descriptive of the services in question and could not be registered under Article 7(1)(c) of the regulation.

The Board of Appeal also held that, “as the mark IP ZONE was not understood as an indication of the origin of the services at issue”, it was devoid of distinctive character and therefore could not be registered under Article 7(1)(b) of the regulation. In relation to the marks EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE, the board held that such marks could not be registered under Article 7(1)(b) as they were descriptive of the services claimed and therefore they were devoid of distinctive character.

The applicant appealed the decisions, claiming that the board had erred in finding that the marks were descriptive in relation to the services covered by the applications for registration. The applicant claimed (during the hearing) that the relevant public were not professionals in the field of intellectual property, but rather that the hosting of an online portal was carried out by IT experts and the services provided by the portal were also addressed to the general public.

The General Court held that the Board of Appeal had acted correctly in holding that the relevant public was made up of English-speaking professionals in the field of intellectual property, stating that:

“it cannot be validly claimed that the services at issue… were not principally intended for professionals in the field of intellectual property, in so far as these are very specific services which refer expressly to the field of intellectual property.”

Moreover, the General Court held that, even if it was accepted that the services in question are also intended for the general public, the purpose of Article 7(1)(c) is to ensure the possibility, for all economic operators, to use freely terms designating the characteristics of the goods or services which they market. Therefore, OHIM was entitled to take account of the presence within the general public of a more limited category of persons made up of consumers for whom the goods and services covered by the marks are particularly intended.

In relation to the descriptiveness of the marks, the General Court did not accept the applicant’s claim that the element 'ip' of the marks may invoke different meanings on the part of the relevant public. The General Court held that:

"the possible meaning of the acronym IP should not be examined in the abstract, but in relation to the services covered by the marks applied for and to the consumers for whom they are intended... [T]he relevant public is made up of English-speaking professionals in the field of intellectual property, that is to say, a public which regularly uses the abbreviation IP to refer to the words ‘intellectual property’.”

The General Court did not accept the applicant’s submission that, even if one of the possible meanings of a term is descriptive, this does not necessarily lead to a conclusion that the term is descriptive. Referring to OHIM v Wrigley (Case C-191/01 P), the General Court held that a sign must be refused registration if at least one of its meanings designates a characteristic of the goods or services concerned.

The General Court also did not accept the applicant’s argument that the public in question would not perceive immediately that “the word ‘zone’ corresponded to a particular area different to those surrounding it... and without further thought, that term as being a description of an online portal”. The General Court held that the applicant’s marks, “taken as a whole, will be unequivocally understood by the relevant public as describing an area devoted to intellectual property”. Further, it stated that the Board of Appeal had not in any way found in its decisions that the word ‘zone’, by itself, described an online portal.

In relation to the applicant’s claim that the Board of Appeal had not stated that the marks were descriptive of the services in question but rather more generally descriptive of a website devoted to intellectual property or a virtual information zone on intellectual property, the General Court held that the board had found that IP ZONE would be perceived as an area dedicated to intellectual property which, although “not a particularly precise definition, clearly includes the services” designated by the marks.

Referring to the applicant’s arguments that the mark IP ZONE had been registered in the United States for services linked to the provision of access to an intellectual property database, the General Court stated that the Community trademark regime is “an autonomous system with its own set of objectives peculiar to it; it is self-sufficient and applies independently of any national system”.

The General Court held that it was not necessary to rule on the infringement of Article 7(1)(b) of the regulation, as it was sufficient if one of the absolute grounds listed in Article 7(1) of the regulation applied.

Colette Brady, DFMG Solicitors, Dublin