Grundig's DETERGENTOPTIMISER mark held to be descriptive for Class 7 goods

In Grundig Multimedia AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-707/14, September 25 2015), the General Court has confirmed a decision of the First Board of Appeal of OHIM rejecting the registration of the word mark DETERGENTOPTIMISER (DetergentOptimiser), filed by Grundig Multimedia AG, on the ground that it was descriptive.

On July 2 2013 Grundig filed an application for registration as a Community trademark (CTM) of the word sign DETERGENTOPTIMISER for goods in Class 7 of the Nice Classification ("textile washing machines; washing machines (laundry machines/dishwashing machines); electrical machines for cleaning floors and carpets"). The examiner rejected the application based on Articles 7(1)(b) ("trademarks which are devoid of any distinctive character") and 7(1)(c) ("trademarks which consist exclusively of signs or indication 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") of the Community Trademark Regulation (207/2009).

The appeal filed by the applicant against this decision was dismissed by OHIM based mainly on the same grounds, namely that the mark was descriptive of the characteristics of the goods concerned.

The Board of Appeal held that the sign DETERGENTOPTIMISER was composed of English words and, therefore, its registrability had to be assessed from the point of view of the English-speaking public, contrary to the applicant's argument that the trademark consisted of French words and that, in that language, the sign was not descriptive. The Board of Appeal considered that the meaning of the words 'detergent' and 'optimiser' described, without any further reflection on the part of the relevant public, that the goods at issue allowed an optimal use of detergent.  

As a general principle, Article 7(1)(c) of the regulation pursues an aim in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. In order to fall under the provisions of this article, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics.

In this case, the General Court considered that these conditions were met, contrary to what the applicant alleged - namely, that:

• the meaning of the word 'optimiser' was not obvious;
• its use for a machine was unusual;
• its association with the word 'detergent', which refers to an object and not to a person, made its meaning even less clear; and
• the association of those two words referred to the production of a detergent and not to its use.

The court considered that the Board of Appeal was right to identify the relevant public as the English-speaking public, and found that the juxtaposition of the words 'detergent' and 'optimiser' was not particularly surprising or unusual for the relevant public, which would understand that the mark designates, without any particular interpretation, that the goods at issue allow an optimal use of detergent (therefore, the kind and quality of goods).

In addition, the court discussed two principles, namely:

(i) The 'unitary character' of a CTM, which implies that it must have "equal effect throughout the Community" and, therefore, distinctive character throughout the European Union. Thus, a sign cannot be registered as a CTM if it lacks distinctive character in a part of the European Union; a part may consist of a single member state. In this case, the sign was not distinctive at least for the English-speaking public.

(ii) The principle of 'equal treatment' - the applicant argued that the Board of Appeal had infringed this principle by refusing to register the mark applied for, although it had agreed to register similar or comparable marks, including the American spelling 'Optimizer'. The court held that OHIM must take into account decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. However, an applicant cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. The examination has to be performed for each case, considering the factual circumstances of the particular case. Here, the court found that the Board of Appeal had performed a full and specific examination of the trademark before refusing it.

For all the above reasons, the court concluded that the trademark applied for was descriptive within the meaning of Article 7(1)(c) and, therefore, the refusal of the application was justified. The action of the applicant was thus dismissed.

Delia Belciu, TSAA, Bucharest