LOKTHREAD mark fails to secure registration
In MacLean-Fogg Co v Office for Harmonization in the Internal Market (OHIM) (Case T-339/05), the European Court of First Instance (CFI) has rejected an application to register the word mark LOKTHREAD for "bolts, bolts of metal, nuts, nuts of metal" in Class 6 of the Nice Classification.
OHIM rejected the application pursuant to Article 7(1)(b) and (c) of the Community Trademark Regulation. The examiner held that the trademark, when considered as a whole, was descriptive and lacked distinctiveness. The Board of Appeal upheld the decision, stating that LOKTHREAD was descriptive for the goods in question since it was made up exclusively of two English words that are descriptive of characteristics of the goods for which registration was sought. The board held that the mere combination of the components did not alter this fact.
MacLean-Fogg Co appealed to the CFI, pleading that OHIM had infringed Article 7(1)(c) and (b). With regard to Article 7(1)(c), MacLean-Fogg submitted, among other things, that:
- the assessment of the descriptive character of the mark LOKTHREAD must be made both in respect of professionals as well as the average consumer in general;
- the relevant public relates to consumers in the entire European Union and not just the English-speaking public;
- the term 'LOKTHREAD' is a neologism of unknown origin, which does not belong to any particular European language;
- the existence of an absolute ground for refusal should not have been examined in relation to the English-speaking public alone, because the sign LOKTHREAD is not composed of English terms but is a neologism with no origin;
- the sign LOKTHREAD is unusual; the relevant public will not separate it into different parts and will not interpret the word 'lok' as meaning 'lock' without analyzing it;
- the sign LOKTHREAD must be examined as a whole, concentrating on the overall impression; and
- two separate trademarks exist in the United States for LOK-THREAD and THREAD-LOCK.
As with the Board of Appeal, the CFI held that the relevant public, in respect of which it is necessary to assess the absolute ground for refusal, is a public that is reasonably well informed and reasonably observant and circumspect. Furthermore, the CFI, in accordance with the decision of the Board of Appeal, stressed that the mark LOKTHREAD is composed of English words:
- 'lok', which is to be read like 'lock'; and
- 'thread', which is commonly used in English in relation to the goods concerned.
Next, the CFI stressed that:
- the existence of the absolute grounds for refusal must be assessed mainly in respect of the English-speaking part of the European Union; and
- the relevant public in the present case is the English-speaking general public, since the mark in question is composed of elements of the English language.
In addition, the CFI stated that in order for a trademark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive, it is not sufficient that each of its components may be considered to be descriptive. The word or neologism itself must be considered to be so. In this regard, the CFI underlined that the mere sum of the elements is descriptive unless there is a perceptible difference between the neologism or the word, and the mere sum of its parts.
The CFI held that both the words 'lock' and 'thread', which make up the LOKTHREAD mark, must be regarded as descriptive of one of the intended uses or technical characteristics of the goods for which registration was sought. In accordance with the decision of the Board of Appeal, the CFI underlined that:
"as a whole, the term 'lokthread' means a thread that locks, or a thread structure used in a locking mechanism, and since bolts and nuts are locking mechanisms, the relevant public will therefore be able to perceive a characteristic of the product."
In conclusion, the CFI held that the connection between the mark LOKTHREAD and the characteristics of the goods covered by Maclean-Fogg's application was sufficient to fall under the prohibition of Article 7(1)(c). On these grounds, the CFI dismissed the appeal.
Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Federspiel Kierkegaard, Aarhus
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