Hewlett Packard's ELITEPAD mark held to be descriptive

European Union

In Hewlett Packard Development Company LP v Office for Harmonisation in the Internal Market (OHIM) (Case T-470/14), the General Court has upheld a decision of the Second Board of Appeal of OHIM finding that the mark ELITEPAD was not registrable as a Community trademark (CTM).

Hewlett Packard filed an application for the registration of the mark ELITEPAD as a CTM for goods in Class 9 of the Nice Classification ("computers; personal computers; laptop computers; notebook computers; tablet computers; computer hardware; computer peripherals").

Both the examiner and the Second Board of Appeal of OHIM found that the sign ELITEPAD was descriptive in relation to the goods designated by it. Hewlett Packard filed a notice of appeal with the General Court, which had to judge whether the sign fell within the scope of the prohibition laid down in Article 7(1)(c) of the Community Trademark Regulation (207/2009).

According to the Court of Justice of the European Union, the situations specifically covered by Article 7(1)(c) are those in which the sign in respect of which registration is sought is capable of designating a characteristic of the goods or services referred to in the application. By using, in Article 7(1)(c), the terms "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", the legislator made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (Agencja Wydawnicza Technopol sp zoo v OHIM (Case C-51/10 P), Paragraph 49). That provision prevents the signs or indications to which it refers from being reserved by one undertaking alone because they have been registered as trademarks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (OHIM v Wrigley (DOUBLEMINT) (Case C-191/01), Paragraph 31; MacLean-Fogg v OHIM (LOKTHREAD) (Case T-339/05), Paragraph 27).

For a trademark which consists of a neologism or a word produced by a combination of elements regarded as descriptive, it is not sufficient that each of its components may be found to be descriptive. The neologism or word itself must also be found to be so (see LOKTHREAD, Paragraph 30 and the case law cited).

A trademark consisting of a neologism or a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c), unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that would be the case where, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, an analysis of the word at issue in the light of the appropriate lexical and grammatical rules is also relevant (see LOKTHREAD, Paragraph 31 and the case law cited).

In the present case, the question was whether the relevant public - that is, English-speaking average consumers and professionals in the European Union - would perceive the sign ELITEPAD as descriptive in relation to the goods concerned (ie, computers).

According to the General Court, the simple combination of the components ‘elite’ and ‘pad’, brought together in the mark applied for, did not constitute an unusual variation from a syntactic or semantic point of view, and that combination would not result in a specific meaning different from that conveyed by the two components.  It is common in English to create words by coupling together two words, each of which has a meaning (see Campina Melkunie v Benelux-Merkenbureau (BIOMILD) (Case C-265/00), Paragraph 40; Koninklijke KPN Nederland v Benelux-Merkenbureau (POSTKANTOOR) (C-363/99), Paragraph 104; LOKTHREAD, Paragraph 52; Duro Sweden v OHIM (EASYCOVER) (Case T-346/07), Paragraph 52).

In other words: 1 + 1 should equal 3. In the case at hand, Hewlett Packard could not dispute that one of the meanings of the word ‘pad’ is a panel that is responsive to pressure or touch, and that the word ‘elite’ refers to the notion of exclusivity, therefore linking the idea of something superior to that of a privilege or a selection, even of exclusivity, in relation to the goods. Having regard to its structure, which is not unusual, and to the fact that it complies with the rules of the English language, the sign did not create an impression on the part of the target public that was sufficiently removed from that produced by the mere juxtaposition of the words to change their meaning or scope (see, EASYCOVER, Paragraph 55; DaimlerChrysler v OHIM (CARCARD) (Case T-356/00), Paragraph 29; HERON Robotunits v OHIM (ROBOTUNITS) (Case T-222/02), Paragraph 39; and Metso Paper Automation v OHIM (PAPERLAB) (Case T-19/04), Paragraph 32).

The fact that the component ‘pad’ also had other meanings was irrelevant. It was sufficient that at least one of its possible meanings designated a characteristic of the goods (DOUBLEMINT, Paragraph 32).

Therefore, contrary to the trademark iPAD (CTM No 004928859), ELITEPAD was considered to be a neologism consisting of an English adjective (‘elite’) and an English noun (‘pad’), which, even in the absence of a hyphen or a space between the two words, did not amount to a distinctive or unusual variation capable of distinguishing Hewlett Packard’s products from those of other undertakings.

The ‘i’ in the mark iPAD is a fanciful expression that, contrary to ‘elite’ in the sign ELITEPAD, cannot be regarded as designating directly one of the characteristics of the computer pads (see PAPERLAB, Paragraph 25; and Grundig Multimedia v OHIM (GENTLECARE) (Case T-188/14), Paragraph 19). Contrary to the sign ELITEPAD, iPAD amounts to something more than the combination of its individual elements.

On the basis of a similar reasoning, the General Court also dismissed Hewlett Packard’s appeal with respect to the application for the mark ELITEDISPLAY (Case T-563/14).

Paul Maeyaert, ALTIUS, Brussels

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