Juxtaposition of words falls foul of descriptiveness prohibition

European Union
In Hoelzer v Office for Harmonization in the Internal Market (OHIM) (Case T-315/09, June 9 2010), the General Court has refused to register the figurative mark SAFELOAD as a Community trademark for goods in Classes 6 and 12 of the Nice Classification.

SAFELOAD had been refused by the OHIM examiner in 2008 and by the Fourth Board of Appeal in 2009 on the grounds that the mark was descriptive and devoid of distinctive character, being little more than a contraction of two words, 'safe' and 'load'.

The applicant, Olivier Hoelzer, appealed to the General Court, alleging that the word element of the mark was not devoid of distinctive character and did not describe characteristics of the goods covered by the application. Therefore, the board had breached Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009).

First, the General Court reiterated that marks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods cannot be registered. It also noted that this would be the case even if the mark is descriptive in only one part of the European Union. The court felt that the mark’s descriptiveness should be considered by reference to the relevant public, who must immediately recognize that the mark describes the goods and services or their characteristics for it to fall foul of Article 7 of the regulation.

The court then examined the descriptiveness of the mark in respect of the goods at issue. It considered whether there was a sufficiently direct link between SAFELOAD and the goods covered by the application - namely, road vehicles and trailers (Class 12) which might be loaded, and tarpaulin-covered superstructures for road vehicles and trailers (Class 6) onto which items might be loaded.

The court recognized that the application was for a composite term, rather than 'safe' and 'load' as separate words, but held that this did not sufficiently distance it from the goods in the application. For example, the words were often used together by the relevant public and their juxtaposition was in accordance with customary English spelling and grammatical rules (with the adjective preceding the noun), such that the reader would easily recognize the two words separately.

Moreover, the mark would imply 'safety' in English, which would be viewed by the public as representing a characteristic of the goods and was paramount in relation to the goods in the application. In response, Hoelzer submitted that 'safe' might also be viewed as a noun, making the mark ‘fanciful’. However, the court’s response was that, even if one potential meaning designated a characteristic of the goods, this would be sufficient for the mark to fall foul of Article 7.

The court accepted that the word was written in capital italics and that the font contained horizontal black and white hatchings, but felt that these elements were banal and did little to avert the attention of consumers from the descriptive message behind the combination of the two words.

The court then considered the descriptiveness of the mark for the relevant public. The court disagreed with OHIM on the point that the relevant public consisted only of businesses specializing in the transportation of goods. The relevant public also included any business which used the goods, as submitted by Hoelzer. Yet, this did not affect its ultimate decision that the relevant public would view the mark as descriptive, since the court raised a new point that English speakers, whatever their level of specialization, would understand what was meant by 'safe load' or 'safe freight'.

Having considered that the decisions of national trademark authorities were not a determining factor in the final decision, the court rejected Hoelzer’s application in full. In accordance with its usual practice, it did not consider whether Article 7(1)(b) applied in addition, since the application automatically failed if the mark was descriptive.

The General Court has been retreating from accepting descriptive marks since its controversial approval of the BABY-DRY mark in 1999 (see Procter & Gamble Company v OHIM (Case T-163/98)). This decision supplements a growing bank of examples to which trademark applicants may refer when considering the descriptiveness of their applications, but it does not really bring anything new to the field. The general principle for trademark applicants remains the same: avoid descriptive marks if possible and, if there is a risk of the mark appearing descriptive, employ unusual grammar or spelling, or incorporate a word or graphic element which is distinctive.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London

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