I.T.@MANPOWER held to be valid for IT goods and services
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In HUP Uslugi Polska sp zoo v Office for Harmonization in the Internal Market (OHIM) (Case T-248/05, September 24 2008), the Court of First Instance (CFI) has dismissed an appeal against a decision rejecting an application for a declaration that the trademark I.T.@MANPOWER was invalid.
In June 2001 HUP Uslugi Polska sp zoo filed an application for a declaration that Manpower Inc’s trademark I.T.@MANPOWER (Registration 861559) was invalid. The trademark covers goods and services in Classes 9, 16, 35, 38, 41 and 42 of the Nice Classification. HUP’s application was based on Article 51(1)(a) of the Community Trademark Regulation (40/94), read in conjunction with Articles 7(1)(b), (c), (d) and (g). The Cancellation Division rejected the application in December 2003. The Board of Appeal of OHIM upheld the decision of the Cancellation Division in April 2005. HUP appealed to the CFI.
HUP claimed that the trademark I.T.@MANPOWER had been registered in breach of Article 7(1)(b) of the regulation since it did not possess the minimum level of distinctiveness necessary for registration, and thus could not distinguish the goods and services protected by it. HUP contested the Board of Appeal’s finding that the mark was distinctive because of the combination of its three elements and because it was not directly descriptive of the goods and services in question. HUP claimed that the mark as a whole was descriptive of all the goods and services concerned.
HUP observed that ‘IT’ is an abbreviation for ‘information technology’, and that the symbol @ (meaning ‘at’) indicates where the name or term in front of the symbol can be found, reached or offered. Therefore, according to HUP, the mark I.T.@MANPOWER could serve to designate the characteristic of the goods and services covered by the mark within the meaning of Article 7(1)(c) of the regulation.
HUP also stated that all the elements of the I.T.@MANPOWER mark have become customary in the current language and that the combination of those elements did not result in an “imaginative overall impression” going beyond the sum of its elements.
Finally, relying on Article 7(1)(g) of the regulation, HUP claimed that due to the clear statement contained in the mark, the public would be deceived if the goods and services actually offered did not have any connection with “manpower in the sector of information technology”.
First, the CFI considered that the relevant public consisted of English-speaking consumers.
The CFI then assessed whether, for the public in question, there was a sufficiently direct and specific relationship between the mark and the goods and services in question. The Board of Appeal had held that the mark suggested only that an entity named Manpower “provides something related to information technology”. However, according to the board, this could not be understood as referring precisely to a workforce in the field of information technology. The CFI noted that HUP had not submitted any evidence to invalidate the assessment of the board.
Moreover, the CFI rejected the claim that all the elements of the mark had become customary, since the mark had to be assessed as a whole based on the perception of the relevant public. HUP did not claim that the whole mark had become customary in current language and there was no indication to that effect.
In addition, the CFI found that the combination of an acronym, a symbol and a word is not a usual way of designating goods or services. Moreover, it stated that even though certain consumers might perceive the mark as meaning ‘information technology at Manpower’, the mark performed the essential function of a trademark, which is to identify the commercial origin of the goods and services at issue.
Finally, the CFI noted the mark did not “convey a clear message concerning the goods and services in question or their characteristics, but, at the very most, hint[ed] at them”. Therefore, the mark was not specific enough to be “capable of giving rise to actual deceit or a sufficiently serious risk that consumers w[ould] be deceived”.
In light of the above, the action was dismissed in its entirety.
Matti Nousiainen, Berggren Oy Ab, Helsinki
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