IFS not descriptive of car parts, says CFI

European Union

In JTEKT Corp v Office for Harmonization in the Internal Market (OHIM) (Case T-462/05, December 10 2008), the Court of First Instance (CFI) has annulled a decision of the First Board of Appeal of OHIM in which the latter had held that the mark IFS was descriptive in relation to vehicle parts.

JTEKT Corp filed an application for the registration of the mark IFS as a Community trademark for “vehicles and parts thereof” in Class 12 of the Nice Classification. The OHIM examiner rejected the application on the grounds that the mark was descriptive, holding that IFS was the abbreviation of the expression 'independent front suspension'. JTEKT then limited the list of goods to "steering and power steering, both for vehicles and parts therefor, excluding independent front suspension" in Class 12. However, the OHIM examiner maintained the objection and refused registration. The First Board of Appeal of OHIM affirmed, holding that the relevant public would perceive the mark as an acronym which designated an essential characteristic of the goods concerned - thereby ignoring JTEKT's claims that steering and suspension systems were separate technical fields. JTEKT appealed to the CFI.
First, the CFI found that it was common ground that the initials ‘IFS’ are an acronym of the English phrase 'independent front suspension', which is commonly used in the car industry to describe a mechanism enabling wheels to be moved vertically and independently of the other wheels so as to maximize the vehicle’s grip on the road. Further, the CFI found that the relevant public was made up of consumers interested in the purchase of steering and power steering for vehicles and of other vehicle parts - and not the purchase of vehicles as such. These purchasers are primarily vehicle manufacturers and garage owners responsible for the repair of vehicles. Therefore, the relevant public has a sound knowledge of technical aspects of the manufacture and repair of vehicles.
The main issue before the CFI was whether this sophisticated group of consumers:
  • would be aware - as JTEKT contended - that steering and suspension systems were separate technical fields; or
  • would assume - as OHIM contended - that a steering or power steering system called IFS was designed to achieve specific technical results, namely to be fitted to vehicles with independent front suspension.
In this regard, the court placed the burden of proof on OHIM. As OHIM could not point to a single document which established a technical link between steering systems and independent front suspension, the court held in favour of JTEKT and annulled the decision of the board.
Two interesting procedural aspects were also addressed in this case. First, the OHIM examiner rejected the application on the grounds that the mark was descriptive under Article 7(1)(c) of the Community Trademark Regulation (40/94) and devoid of distinctive character under Article 7(1)(b) of the regulation. However, the board confirmed the decision only with regard to distinctiveness, and OHIM was not allowed to rely on Article 7(1)(b) on appeal to the CFI. Similarly, on appeal OHIM was not allowed to claim that the trademark IFS was deceptive under Article 7(1)(g) of the regulation.
This case shows that where the relevant public is sophisticated, OHIM may have a higher burden of proving that a mark lacks distinctiveness. 
Peter Gustav Olson, MAQS Law Firm, Copenhagen

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