INTELLIGENT VOLTAGE GUARD held to lack distinctiveness

European Union

In TridonicAtco GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-297/07, October 15 2008), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register the figurative mark INTELLIGENT VOLTAGE GUARD for “electric and electronic equipment for lights”. 

TridonicAtco GmbH & Co KG filed an application for the registration of the mark INTELLIGENT VOLTAGE GUARD (and design) as a Community trademark for, among other things, "electric and electronic equipment for lights" and "illuminating diodes" in Classes 9 and 11 of the Nice Classification. The examiner rejected the application under Article 7(1)(b) of the Community Trademark Regulation (40/94). TridonicAtco appealed. The Second Board of Appeal dismissed the appeal, holding that the mark was devoid of any distinctive character. 

TridonicAtco appealed to the CFI. It claimed that the Board of Appeal had infringed Article 7(1)(b) of the regulation, as it had wrongly presumed that all the goods covered by the application were equipped with a technical device for measuring voltage. The CFI disagreed, holding that the board had correctly found that the relevant public might believe that all the goods at issue were equipped with such technical devices.
In addition, TridonicAtco argued that the board had:
  • failed to examine the distinctive character of the mark with regard to each of the goods covered by the application; and
  • erred in its assessment of the distinctiveness of the mark.  
The CFI ruled that the board was not required to examine the distinctive character of the mark with regard to every single product mentioned in the application if the goods in question belonged to the same category. The CFI pointed out that the distinctive character of a sign must be assessed in light of the expectations of the relevant consumers. As the relevant public consisted of professionals and consumers with a certain technical knowledge, the CFI concluded that the relevant public would perceive the goods in question as equipment for electric charge protection. Since all the goods covered by the application belonged to the same category of goods (“electric and electronic equipment”), the board was not required to provide reasons for each type of goods. 
Finally, TridonicAtco argued that the combination of the words 'intelligent voltage guard' with the highly stylized image of an old-fashioned voltmeter was unusual. The CFI held that the relevant public - which consisted of native English speakers - would perceive the words 'intelligent voltage guard' as referring to the function of the goods at issue, and not to the source of the goods. The same reasoning applied to the figurative element of the mark, as the voltmeter is the archetype that immediately comes to mind when thinking of the type of equipment used for measuring voltage. Therefore, the relevant public would not perceive the figurative element of the mark as referring to a certain company. 
Accordingly, the CFI held that the Board of Appeal had correctly found that the mark was devoid of any distinctive character. The appeal was thus dismissed.
Elke Dichlberger, Sattler & Schanda Rechtsanwälte, Vienna

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