General Court: Volkswagen's EXTRA mark is not distinctive

European Union

In Volkswagen AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-216/14, April 28 2015), the General Court has upheld OHIM’s refusal of an application to register the word mark EXTRA for vehicles and related goods in Class 12, model vehicles, toys and related goods in Class 28, vehicle retail and related services in Class 35 and repair, maintenance and related services in Class 37 of the Nice Classification.

Volkswagen filed the application in April 2013. On examination in May 2013, OHIM raised an objection under Article 7(1)(b) of the Community Trademark Regulation (207/2009) on the basis that the mark would be perceived as a laudatory promotional message emphasising the positive qualities of the goods and services.

Volkswagen argued in written submissions in June 2013 that the mark was unusual when considered in isolation, and indeterminate with regard to possible positive connotations, such that its distinctive character should be recognised.

In September 2013 the OHIM examiner rejected the application under Article 7(1)(b) and Volkswagen appealed against the rejection.

In February 2014 the First Board of Appeal of OHIM rejected the appeal, holding that the relevant public would not perceive the mark as an indication of the commercial source of the goods and services in question and would therefore be incapable of functioning as a source indicator. Volkswagen appealed to the General Court.

The General Court based its judgment on the following five grounds:

  1. The goods and services in question are directed at the average consumer and professionals, and despite the attention level of professionals being generally high, it can be relatively low with regard to signs of a promotional nature.

  2. The Board of Appeal had correctly held that the word 'extra' could mean 'particularly', 'more', 'in addition' or 'extraordinary', such that it designated higher quality. With reference to its own judgment in Case T-81/13 (BigXtra), the word 'extra' could only be a generic laudatory term and was therefore not capable of designating commercial origin.

  3. Lack of descriptiveness does not automatically mean that a mark is distinctive.

  4. Contrary to Volkswagen’s assertion that the meaning of the mark would not be immediately clear to the relevant public, the laudatory or promotional meaning of the mark would be clearly and directly perceived due to its exclusively promotional character and, therefore, the mark would not be considered as an indicator of commercial origin.

  5. Volkswagen claimed that the Board of Appeal had not treated it equally by refusing the application when it had previously accepted an application for the mark SMART for motor vehicles, which Volkswagen claimed was an identical mark. The court confirmed that the examination of every application must be strict and complete in order to ensure that marks are not registered without due cause. In this case, the court considered that the examination of the application could not have reached a different conclusion than it did.

The General Court therefore upheld the refusal of the application.

The CTM register shows no word mark registrations of EXTRA in any class. This appears to support the General Court’s judgment. It is interesting that Volkswagen sought to rely on a CTM registration of SMART owned by Daimler AG. There are arguably some similarities between SMART and EXTRA in terms of distinctiveness and/or descriptiveness, but it might have been optimistic to describe the marks as effectively identical.

Chris McLeod, Squire Patton Boggs (UK) LLP, London

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