LIGHT & SPACE held to lack distinctive character

In Imperial Chemical Industries plc v Office for Harmonization in the Internal Market (OHIM) (Case T-224/07, October 10 2008), the Court of First Instance (CFI), using reasoning usually restricted to descriptiveness assessments, has held that the trademark LIGHT & SPACE lacked distinctive character in relation to goods in Class 2 of the Nice Classification.

Imperial Chemical Industries plc (ICI) applied for the registration of the word mark LIGHT & SPACE as a Community trademark for the following groups of goods in Class 2:

"paints, varnishes, lacquers";
"driers, including curing driers, thinners, colouring matters, all being additives for paints, varnishes or lacquers"; and
"preservatives against rust and against deterioration of wood; priming preparations (in the nature of paints); wood stains".

The examiner rejected the application in its entirety under Article 7(1)(b) of the Community Trademark Regulation (40/94) on the grounds that the trademark applied for was devoid of any distinctive character. The First Board of Appeal of OHIM affirmed, finding that the relevant public would perceive the mark LIGHT & SPACE as a promotional message intended to draw attention to the positive aspects of ICI's goods, rather than as an indication of the commercial origin of the goods.

ICI appealed to the CFI, arguing that:

the Board of Appeal had incorrectly found that the mark would be perceived as a slogan;
the board had failed to consider whether the mark applied for could act as an indication of origin;
the board had erred in its assessment of the distinctiveness of the sign as a whole;
the absence of distinctive character could not be inferred from the mere fact that the mark applied for did not look unusual or striking;
the board had assessed the distinctive character of the goods collectively.

With regard to the first claim, the CFI held the board was entitled to use additional words or concepts in order to clarify the content of the expression 'light & space'. Such use of additional words or concepts did not mean that the message contained in the mark was not immediately understandable by the relevant public. Thus, the board did not err in finding that the mark would be perceived first and foremost as a slogan.

With regard to the second claim, the CFI upheld the board's reasoning that:

“in the absence of any additional distinctive elements, [...] the sign was descriptive of certain properties of the goods covered by the mark and [...] would be immediately perceived as a promotional message, rather than as an indication of the commercial origin of the goods concerned."

Similarly, as regards the third claim, the CFI held that:

“although the word ‘space’, taken in isolation, is not descriptive of any of the goods covered by the mark applied for, nevertheless, when assessed as a whole, the sign in question indicates to the relevant public that the goods covered have the particular quality of creating a luminous and spacious ambiance."

With regard to the fourth claim, the CFI confirmed the board’s finding that the trademark LIGHT & SPACE was a promotional formula establishing a clear factual and objective link between the message expressed by the mark and the goods in question. The court concluded that since the mark applied for functioned first and foremost as an incitement to the relevant public to purchase the goods in question, there was no reason to believe that the relevant public would see it as an indication of the commercial origin of those goods.

However, with regard to the fifth claim, the CFI found that the board had erred in finding that the entire list of goods lacked distinctiveness without addressing each group of goods. Nevertheless, the CFI found that the mark lacked distinctiveness in relation to the three groups of goods under Article 7(1)(b) of the regulation. Even with regard to the third group (which includes “preservatives against rust”), the CFI held that the mark lacked distinctiveness because “it cannot be excluded that such goods and paints perform similar functions, insofar as they are also likely to contain colour”.

The decision shows that descriptive marks will also be considered to lack distinctiveness. However, where descriptiveness is indirect, the OHIM may refuse registration based on Article 7(1)(b).

Peter Gustav Olson, MAQS Law Firm, Copenhagen

LIGHT & SPACE held to lack distinctive character

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