General Court provides detailed guidance on interpretation of Article 7(1)(c)

European Union
In Chestnut Medical Technologies Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-87/10, October 11 2011), the General Court has explained in detail how Article 7(1)(c) of the Community Trademark Regulation (207/2009) is to be interpreted and applied.
On January 24 2009 Chestnut Medical Technologies Inc applied for the registration of the word sign PIPELINE for “medical devices, namely devices used in the treatment of aneurysmsin Class 10 of the Nice Classification.
By decision of June 23 2009, the OHIM examiner rejected the application on the basis of Articles 7(1)(b) and (c) and Article 7(2) of the regulation, which provide as follows:

"1. The following shall not be registered:
(b) trademarks which are devoid of any distinctive character;
(c) 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;
2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community
The applicant appealed.

The Second Board of Appeal of OHIM dismissed the appeal, considering that PIPELINE was descriptive. In particular, the board found that:

“[…] the relevant public was made up solely of professionals from the medical sector who were deemed to be particularly well informed and reasonably attentive, and thus better able to understand the descriptive connotations of a given term […] [T]he relevant public would therefore perceive the word 'pipeline' as referring to the product itself rather than as an indication of its commercial origin […] [T]he fact that there was no specific dictionary entry for the word 'pipeline' in relation to the goods at issue did not deprive the word of its descriptive character, since the device in question could cover a relatively long distance within an artery of the human body and transport blood in it”.
On appeal, the General Court considered that the applicant’s pleas in law were unfounded. Therefore, it dismissed the action and ordered the applicant to pay the costs.
The judgment of the court is particularly relevant since it examines the ratio legis of Article 7(1)(c) of the regulation, underlining that this provision strictly prohibits the registration of trademarks that merely inform consumers as to the characteristics of the goods or services concerned. The General Court, referring to OHIM v Wrigley (Case C-191/01 P, Paragraph 31), Ellos v OHIM (Case T-219/00, Paragraph 27) and Maclean-Fogg v OHIM (Case T-339/05, Paragraph 27), pointed out that "that provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all".

The judgment also highlighted that descriptive trademarks work against their very nature and purpose:

"[S]igns or indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 207/2009, regarded as being incapable of fulfilling the essential function of a trademark, namely that of identifying the commercial origin of the goods or services.”
One may conclude that a trademark is descriptive when there is an unambiguous link between the mark and the characteristics of the goods or services concerned to such a degree that the mark may only serve to describe these characteristics. Referring to Streamserve v OHIM (Case T-106/00, Paragraph 40) and Maclean-Fogg v OHIM (Paragraph 27), the court pointed out that:
" [...] for a sign to fall within the scope of the prohibition set out in [Article 7(1)(c)], there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question".  

The term 'public concerned' is to be interpreted as referring to consumers of the goods and services at issue, not the general public.
In the case at hand, the trademark applied for identified devices for the surgical treatment of aneurysms. Therefore, the relevant public was not the average English-speaking consumer, but “medical professionals specialising in the treatment of aneurysms”. Although the court recognised that the word 'pipeline' "does not evoke in the mind of an average English-speaking consumer a device used for the treatment of the pathology described above, but rather installations for the long-distance conveyance of certain hydrocarbons", the trademark was refused because it was descriptive for the relevant public. The court noted that “a medical professional specialising in the treatment of aneurysms will immediately understand the word 'pipeline', as used in the context of his specialisation, as being a direct and specific indication of the characteristics of the goods in question”.

The General Court also rejected the applicant's arguments that:
  • the word 'pipeline' had other meanings which were not descriptive of the goods at issue; and
  • there were other generic terms used in medicine to designate the type of product at issue, in particular the word 'catheter'.
The court agreed with the Board of Appeal that a word mark must be refused under Article 7(1)(c) "if at least one of its possible meanings designates a characteristic of the goods and services concerned" (see OHIM v Wrigley (Paragraph 32) and Telefon & Buch v OHIM (Case C-326/01 P, Paragraph 28)).

The General Court, referring to Koninklijke KPN Nederland (Case C-363/99, Paragraphs 57 and 101), concluded as follows:

Although Article 7(1)(c) of Regulation 207/2009 provides that, if the ground for refusal set out there is to apply, the mark must consist 'exclusively' of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not, by contrast, require that those signs or indications should be the only way of designating such characteristics.”

The lessons that can be drawn from this judgment should be taken into consideration by every applicant seeking to register a Community trademark.

Manuel Lopes Rocha and Joana Reis, PLMJ - AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon

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