Kitchen towel embossing not distinctive

European Union

In Georgia-Pacific Sarl v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has rejected an application to register embossing on kitchen towels as a three-dimensional Community trademark for products in Classes 16 and 21 of the Nice Classification.

An OHIM examiner rejected Georgia-Pacific Sarl's application, considering that it lacked inherent distinctive character and had not acquired distinctiveness though use.

The Board of Appeal confirmed the decision, pointing out that the overall impression arising from the combination of the embossing and its design would not lead consumers to differentiate the products to which the sign applied from those of different commercial origin.

On appeal to the CFI, Georgia-Pacific argued that not all kitchen towels are embossed and those that are embossed have a specific design each, which also features on the product's packaging. Georgia-Pacific claimed that embossing is necessary as it helps to identify the commercial origin of kitchen towels once the packaging has been removed.

The CFI rejected these arguments, finding that the relevant public would not consider embossing as an indication of the commercial origin of the products, but rather as a suggestion of some of their properties - especially their absorption capacity, which is the first feature sought by consumers for kitchen towels. It was also likely that consumers would perceive the embossing as a purely aesthetic or decorative element.

The court further found that Georgia-Pacific's sign bore no specific or arbitrary features which would (i) significantly diverge from the custom in the trade, and (ii) be likely to capture the public's imagination, especially as the degree of attention paid by consumers of such products is rather low.

Considering the lack of inherent or acquired distinctive character, it is unlikely that Georgia-Pacific would have much chance of succeeding before the European Court of Justice should it choose to appeal the CFI decision. Its chances might have been different had its three-dimensional sign also featured initials or a logo.

Franck Soutoul and Jean-Philippe Bresson, INLEX Conseil, Paris

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