General Court: 'nano' will be understood as referring to size of goods

European Union

In Innovation First Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-379/13, February 10 2015), the General Court has confirmed a decision of the First Board of Appeal of OHIM rejecting an application for registration of the mark NANO on the ground that it was descriptive.

In June 2010 Innovation First Inc filed a Community trademark application for NANO in respect of robots for educational use, and toy robots and their parts and accessories, in Classes 9 and 28 of the Nice Classification. The OHIM examiner rejected the application in June 2012, holding that NANO was an indication of the extremely small size of the products or of the fact that they are based on nanotechnology.

The Board of Appeal confirmed this decision in April 2013. Holding that the relevant public was composed of both average consumers and professionals, the board confirmed that NANO means “extremely small” or “involving the use of nanotechnology” and is therefore not unusual for the goods in question. The board conceded that the public might not be aware of the precise mathematical meaning of 'nano', but would associate this term with small-sized products.

Innovation First filed an action before the General Court, putting forward five pleas in law.

With its first plea, Innovation First argued that its right to be heard had been infringed. It claimed that the decision of the Board of Appeal was based on the fact that NANO means “small size”, rather than “extremely small size” as the examiner had found, and that the applicant had had no chance to submit its observations in this respect. The General Court confirmed that a party affected by a decision must be given the opportunity to make its point of view known and that this right to be heard extends to all the factual and legal material which forms the basis of the decision (Paragraph 14). However, the court held that the examiner had already made the distinction between “extremely small” and “small”, and that Innovation First understood this distinction and had the chance to argue against it in the course of the proceedings.

With its second plea, Innovation First argued that the Board of Appeal had not stated the reasons for its decision completely. In particular, Innovation First alleged that the board's findings were contradictory and inconsistent, as the Board of Appeal had stated that the mark meant “small” in one paragraph, and “extremely small” in another. The General Court confirmed that OHIM decisions are required to state the reasons on which they are based in order to give the parties concerned the chance to examine these reasons and to enable the Courts of the European Union to exercise their power to review the legality of the decision (Paragraph 27). However, the court stated that the decision of the Board of Appeal was not contradictory because the latter had expressly pointed out that the relevant public may not be aware of the precise mathematical meaning of 'nano' and would still associate this term with the small size of the product in question.

With its third and fourth plea, Innovation First alleged an infringement of Articles 76 and 7(1)(c) (descriptiveness) of the Community Trademark Regulation (207/2009). The applicant argued correctly that OHIM must base its assessment on specific facts and not on speculations, conjecture or mere doubts. The General Court held that the absolute ground for refusal in Article 7(1)(c) serves the public interest and excludes from registration those signs which should “be freely used by all”. In Paragraph 41, the court held that, for a sign to be caught by the prohibition set out in Article 7(1)(c), “there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics”. Innovation First’s argument that the evidence used by OHIM referred only to compound terms using 'nano' as a prefix, and not to 'nano' alone, was rejected by the General Court, which held that this evidence allowed conclusions to be drawn and could therefore serve as a basis for a finding of descriptiveness. The court further stated that Innovation First had failed to submit evidence that NANO on its own would be understood in a different way.

Innovation First also argued that the examiner had relied only on some research in the medical and pharmaceutical fields which was not transferrable to the goods in question in Classes 9 and 28. However, the General Court stated that the Board of Appeal had not based its decision on this research and that the examiner had only used this research to support a finding that NANO lacked distinctiveness. Furthermore, the court stated that this research showed that robots can use nanotechnology and, therefore, constituted an indication that the word 'nano' was likely to be used to describe the same characteristics in robots and related goods in Classes 9 and 28. Hence, the court believed that the board's decision was based on relevant facts and that the board had correctly to found that NANO was descriptive for the goods in question.

As the General Court had already confirmed the descriptive character of NANO for the goods in question, it did not address the fifth plea (which concerned whether NANO was sufficiently distinctive).

The decision of the court is not really surprising and affirms well-established rules. From a German perspective, it is interesting to note that, even though the Court of Justice of the European Union has always refused to accept the German doctrine of Freihaltebedürfnis ('need to keep free'), the idea behind this doctrine can be found in a number of decisions and is also found in this decision in Paragraph 39, in which the General Court states that signs which should “be freely used by all” should not be registered. 'Nano' is a term which is used in modern technology, and the General Court correctly found that this term should not be monopolised by one enterprise.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg

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