GLISTEN held to be descriptive of purpose of cleaning products

European Union

In IOIP Holding LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-648/13, February 10 2015), the General Court has upheld a decision of the Second Board of Appeal of OHIM (Case R 1028/2013-2) in which the latter had refused IOIP Holding’s Community trademark (CTM) application for the word mark GLISTEN for cleaning products.

On October 30 2012 IOIP Holdings filed an application for the registration of the word sign GLISTEN as a CTM for the following products in Class 3 of the Nice Classification: “cleaning preparations for dishwashers; cleaning preparations for washing machines; cleaning preparations for hot tubs and jetted bathtubs; cleaning preparations for microwave ovens; cleaning, freshening, deodorant and disinfectant preparations for garbage disposals”.

In a decision of April 5 2013, OHIM rejected the application based on absolute grounds, arguing that it did not comply with Articles 7(1)(b) (lack of distinctive character) and 7(1)(c) (the mark consists exclusively of signs or indications which designate characteristics of the goods or services) of the Community Trademark Regulation (207/2009).

Following an appeal by the applicant, in a decision of September 11 2013 the Second Board of Appeal of OHIM dismissed the appeal. As the word ‘glisten’ has a meaning in English which is “to shine by reflecting light from a wet, oily or smooth surface”, it considered that, due to its descriptive character, the CTM applied for was devoid of distinctive character, since it informed consumers of the purpose of the goods.

IOIP Holding appealed, alleging, first, infringement of Article 7(1)(c) of the regulation and, second, infringement of Article 7(1)(b). It argued that consumers would not interpret the mark as informing them of the purpose of the goods because the designated goods were not intended to make objects shine or glisten.

OHIM counter-argued that it was not necessary for the sign to be actually used in a way that was descriptive, but solely that it could be used for such purpose, since it is in the public interest that terms that are descriptive or able to indicate characteristics of products or services remain free to be used by all. According to the Board of Appeal, when the average consumers saw the products at issue identified with the mark GLISTEN, they would immediately understand that those cleaning products are to be used to make the cleaned objects shine.

The General Court confirmed OHIM’s arguments and rejected all of IOIP Holding’s claims.

First, with regard to the applicant’s claim that the purpose of the goods covered by the trademark application was not to make objects shine, but to clean and disinfect them, the General Court stated that, in order to assess whether the sign was descriptive or not, the stated or real purpose of the goods claimed was not decisive, since what has to be taken into account is the point of view of the relevant public, who, being exposed regularly to advertising for cleaning products, would not necessarily distinguish between shininess and cleanliness, but would rather associate these two concepts, given that a shiny or glistening surface gives an impression of cleanliness.

Second, the General Court rejected IOIP Holding’s argument that consumers would not use the word ‘glisten’ to describe the purpose of the goods covered by the mark because it had an uncommon and poetic nature. According to the General Court, even if the term ‘glisten’ might indeed have a poetic connotation, the fact is that, for the relevant consumer, it also described the effect that using the goods covered by the mark could have on objects.

Third, the General Court refused the applicant’s allegation that the Board of Appeal’s decision differed from previous OHIM decisions allowing the registration of GLISTEN for goods aimed at making objects shine. In this regard, the General Court stated that, although it was true that OHIM had to consider previous decisions, it also needed to respect the principle of legality. Not only did the previous cases concern marks that covered different goods from those at issue here, but also the mark applied for was descriptive of the purposes of the goods covered.

Fourth, the General Court also rejected the applicant’s argument that the US Patent and Trademark Office had granted a trademark consisting of the word ‘glisten’ for identical goods, on the grounds that the CTM system is autonomous and is governed only by its own regulations. It highlighted the fact that OHIM, the General Court and the Court of Justice of the European Union are not even bound by decisions issued in the member states.

Lastly, after rejecting the applicant’s claim of infringement of Article 7(1)(c), the General Court deemed it unnecessary to examine the second ground of appeal since, if one absolute ground for refusal applies, that is sufficient for the sign to be incapable of being registered as a CTM. 

In view of the above, the General Court dismissed the appeal in its entirety and ordered IOIP Holding to bear the costs.

Teresa de Sicart, Grau & Angulo, Barcelona

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