GENTLECARE held to contain direct information about the way the relevant goods operate
The General Court has rendered its judgment in Grundig Multimedia AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-188/14, January 21 2015). The case was an appeal against a decision of the Fifth Board of Appeal of OHIM of January 24 2014 (Case R 739/2013-5) confirming the rejection of the application for registration of the word sign GENTLECARE as a Community trademark.
Grundig Multimedia BV filed an application for registration of the word sign GENTLECARE on August 7 2012 in Class 7 of the Nice Classification for “engines, electrical engines, their parts and fittings and accessories other than for land vehicles (including parts), electric door openers-closers used in land vehicles (included in this class); alternators, generators, generators of electricity, generators working with solar energy; textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry machines/dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts".
On February 19 2013 the transfer of the application between Grundig Multimedia BV and Grundig Multimedia AG was registered by OHIM.
By decision of February 21 2013, the OHIM examiner rejected the application with respect to part of the goods applied for, namely “textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; washing machines (laundry machines/dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts". The rejection was based on Article 7(1)(b) and (c) and Article 7(2) of the Community Trademark Regulation (207/2009).
The applicant appealed. The Fifth Board of Appeal of OHIM dismissed the appeal on the ground that the word sign GENTLECARE was descriptive and devoid of any distinctive character, as it was a purely descriptive indication in respect of the refused goods. In particular, the board held that the word sign contained direct and specific information regarding the way in which the goods at issue functioned and that, as a result, the connection between the sign and the goods was sufficiently close for Article 7(1)(c) to apply.
Again the applicant chose to appeal the decision. In support of the action before the General Court, the applicant relied on two pleas of law:
- infringement of Article 7(1)(c); and
- infringement of Article 7(1)(b).
To substantiate its claims, Grundig first argued that the expression 'gentle care' has no direct connection with the purpose of each type of goods. The court dismissed this argument, stating that the Board of Appeal had correctly pointed out that, although the machines fulfil different functions in relation to the processing or the maintenance of the different materials, those functions are performed in relation to specific materials and objects, which are commonly expected to require a certain gentleness or attention. The relevant public would thus expect the goods at issue to be able to ensure such gentle care.
Secondly, Grundig argued that it was common in the sector to use a combination of marks to designate goods, the first being the name of the manufacturer, and the second referring to the goods. The General Court stated that this was in no way established. Moreover, as the mark in question contained direct information about the way in which the goods at issue operate, it would not influence the decision.
Thirdly, Grundig argued that the expression 'gentle care' was an unusual expression and that it was not included in any dictionary, which showed that the mark was not descriptive and/or did not lack distinctiveness. The General Court stated that it was apparent from case law that OHIM was not obliged to prove that the sign was included in a dictionary in order to find it descriptive, and that the registration of the mark had to be assessed on the basis of relevant EU legislation. The descriptiveness test applied by the Board of Appeal was therefore sufficient.
Fourthly, Grundig claimed that the Board of Appeal had infringed the principle of equality due to the fact that a registration for a similar mark had been granted. The General Court found that the equality principle must be consistent with respect to the principle of legality, and that an applicant cannot rely to its advantage on a possibly unlawful act committed to the benefit of someone else. Moreover, the examination and conclusion of the Board of Appeal were correct and the applicant could not rely on previous decisions to support the registration of GENTLECARE.
The distinctive character and descriptiveness of a trademark must be assessed by reference to the goods and services in respect of which protection is sought and by reference to the perception of the relevant public. Since the refused goods were intended to maintain fabrics in a good condition, and since GENTLECARE will not be perceived by the relevant public as anything other than a description of a characteristic of the goods at issue, the trademark was descriptive under Article 7(1)(c) and could not be registered.
As one absolute ground for refusal is sufficient to prevent a sign from being registered, the court did not have to examine the second plea in law (infringement of Article 7(1)(b)) and the action was dismissed.
Lars Segato, Gorrissen Federspiel, Aarhus
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