Major toy maker loses two appeals before General Court

European Union
In Ravensburger v Office for Harmonization in the Internal Market (OHIM) (Cases T-243/08 and T-108/09, May 19 2010), the General Court has rejected two appeals brought by Ravensburger AG. It found that EDUCA MEMORY GAME was dissimilar to MEMORY in an invalidity action brought by Ravensburger against Educa Borras SA based on Article 8(1)(b) of the Community Trademark Regulation (40/94), and that Ravensburger's MEMORY mark was descriptive of games pursuant to Articles 7(1)(b) and (c) in a successful application for invalidity made by Educa Borras in retaliation.

In Case T-243/08, Ravensburger relied on German and Austrian registrations for the word mark MEMORY, which was registered for games, among other things, in Class 28 of the Nice Classification, in seeking a declaration of invalidity in respect of a Community trademark (CTM) registration owned by Educa Borras for the figurative mark EDUCA MEMORY GAME, also for games in Class 28.

Ravensburger was successful before the Cancellation Division of OHIM, which found that the word 'memory' had an independent distinctive role within the mark EDUCA MEMORY GAME and, consequently, this mark was visually, phonetically and conceptually similar to Ravensburger's MEMORY mark. As both marks were registered for identical goods, there was a likelihood of confusion.

However, the Board of Appeal annulled the decision of the Cancellation Division, and the General Court upheld the board's views. The General Court held that, while it was possible that an earlier mark may retain an independent distinctive role within a composite mark, causing two marks to be regarded as similar, it was necessary to examine the importance of the earlier mark in the composite mark at issue before that conclusion could be reached.

The Board of Appeal had found that the relevant German-speaking public understood the meaning of the words 'memory' and 'game'. The General Court considered that, due to the graphical appearance of those words in the mark in the same typeface, and within the same rectangle, the relevant public would perceive those words as forming a logical whole (namely, the German equivalent of 'Memory Game'), which was descriptive of the goods covered by the mark. The word 'Educa' was the dominant and distinctive element of the mark.

Consequently, the word 'memory' did not play an independent distinctive role within the composite mark, and the two marks were not visually, aurally or conceptually identical or similar. Ravensburger's appeal was thus rejected.

In Case T-108/09, Ravensburger appealed to the General Court following Educa Borras' successful application for invalidity of the CTM MEMORY, registered in respect of "games recorded on data carriers" in Class 9 and "board games" in Class 28. The Cancellation Division had granted Educa Borras' application on the grounds of Article 7(1)(b) and (c), finding that MEMORY was descriptive for both the Class 9 and the Class 28 goods.

The General Court recalled the following principles for assessing descriptiveness:
  • A sign will be descriptive if there is a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (see Europig v OHIM (Case T-207/06)); and
  • The descriptiveness of a sign must be assessed first by reference to the relevant public's understanding of a sign (here, English-speaking consumers, as the mark is an English word) and, secondly, in relation to the goods and services in question.
As the goods for which the mark was registered included memory games, the General Court considered it clear that the word 'memory' described directly and specifically one of the characteristics and purposes of the goods for which the mark was registered, namely games which required the use and development of a player's memory in order to be successful. The finding that the CTM was invalid for descriptiveness was upheld, and Ravensburger's appeal was rejected.

The General Court was not concerned that the findings of descriptiveness had largely been based on evidence that the word 'memory' was used for descriptive purposes in relation to games originating from English-speaking countries outside the European Union. Although there were some vocabulary differences between American English and British English, as a general rule words had the same meaning in both variations.

It was irrelevant that 'memory' was not currently used in a descriptive sense for games within the European Union. The evidence from the United States and Canada was sufficient to demonstrate that 'memory' could be used for those purposes. It was thus apparent that at least one of that mark's possible meanings designated a characteristic of the goods concerned (see OHIM v Wrigley (Case C-191/01 P)), and it was necessary to keep such an indication free for competitors.

Jennifer Prior, Burges Salmon LLP, Bristol

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