Linking two descriptive words with hyphen does not render mark distinctive

European Union
In Exalation Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-85/08, July 9 2010), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had refused to register the mark VEKTOR-LYCOPIN.

Exalation Ltd filed an application for the registration of the word mark VEKTOR-LYCOPIN as a Community trademark for goods in Classes 5, 29 and 30 of the Nice Classification. The examiner and the Board of Appeal of OHIM refused to register the mark under Articles 7(1)(b) and (c) and Article 7(2) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)). Exalation appealed to the General Court. 
 
First, the court was of the opinion that the relevant public - that is, German and English-speaking professionals (eg, doctors, pharmacists, dieticians and other traders in the goods concerned) and consumers of pharmaceutical, veterinary, dietetic and sanitary preparations for medical use - was aware (or, at least, was likely to become aware) that the German term ‘lycopin’ designates a "carotenoid with antioxidant properties" and that the term ‘vektor’ means, among other things, an "agent transmitting a molecule, substance or disease".
 
Further, the court reiterated that a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see the decisions of the Court of Justice of the European Union (ECJ) in DOUBLEMINT (Case C-191/01 P), BIOMILD (Case C-265/00) and POSTKANTOOR (Case C-363/99)). The court pointed out that VEKTOR-LYCOPIN consisted exclusively of terms which may serve, in trade, to designate characteristics of the goods at issue and, therefore, should be refused registration under Article 7(1)(c).
 
In 2001 the ECJ annulled a decision of the Court of First Instance in which the latter had refused to register the mark BABY-DRY for "disposable diapers made out of paper or cellulose" and "diapers made out of textile" (Procter & Gamble v OHIM (Case C-383/99 P)). The ECJ was of the opinion that a word combination such as ‘Baby-Dry’ was capable of being distinctive from the point of view of the relevant public (ie, English-speaking consumers).
 
In both BABY-DRY and the present case, it was stated that the juxtaposition of two descriptive words may not be descriptive if, because of the unusual nature of the combination, the mark at issue creates an impression which is sufficiently far removed from that produced by the meaning of the terms of which it is composed, with the result that the sign, taken as a whole, is more than the sum of its parts. Moreover, in BABY-DRY, the ECJ stated that:

whilst each of the two words in combination may form part of expressions used in everyday speech to designate the function of babies’ nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics.”
 
In the present case, the court held that linking or combining two terms with a hyphen is usual in both German and English. Moreover, for the purpose of assessing the descriptive nature of the mark, the court held that it was irrelevant whether or not there was evidence of the term ‘Vektor-Lycopin’ in dictionaries.

The action was thus dismissed.

Paul Maeyaert, ALTIUS, Brussels

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