In Powerserv Personalservice GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-405/05, October 15 2008), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had found that the trademark MANPOWER had acquired distinctive character through use in the United Kingdom, Ireland, Germany and Austria.
In March 1996 Manpower Inc
applied for the registration of the word mark MANPOWER as a Community trademark for various goods and services in Classes 9, 16, 35, 41 and 42 of the Nice Classification
. The examiner raised objections on the grounds that the mark lacked distinctive character, but Manpower successfully demonstrated acquired distinctiveness. The mark was thus registered in January 2000.
In July 2000 Powerserv GmbH (formerly Manpower Personal Service GmbH) filed a cancellation action on the grounds that the documents produced by Manpower did not prove acquired distinctiveness in all the relevant parts of the European Union, as required by Article 7(3) of the Community Trademark Regulation
(40/94). In response, Manpower produced new evidence of acquired distinctiveness. The Cancellation Division rejected the action on the grounds that the MANPOWER mark was descriptive only in the United Kingdom and Ireland.
In July 2005 the Board of Appeal affirmed the decision, holding, among other things, that the mark was descriptive in eight countries under Article 7(1)(c) of the regulation, but had acquired distinctiveness through use in the same countries after its registration within the meaning of Article 51.
Powerserv appealed to the CFI on the grounds that the board's decision infringed:
- Articles 7(1)(b) and (c) of the regulation because the mark had no distinctive character and was descriptive of all the goods and services for which it was registered throughout the European Union - that is, including the countries for which the board had found that the mark was not descriptive; and
- Articles 51(2) and 74 of the regulation.
Manpower (as an intervener) requested that the CFI modify the part of the decision in which it had been found that the mark was descriptive in eight countries.
The CFI quickly rejected the claim based on Article 7(1)(b), as it had not been raised before the board of appeal and was thus inadmissible. With regard to the alleged violation of Article 7(1)(c), the CFI referred to the wording of the regulation and its case law, noting that descriptive signs should be freely used by all. It pointed out that a sign will be caught by the prohibition set out in Article 7(1)(c) if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive the sign as a description of the goods and services or one of their characteristics (see Europig
In order to determine whether the mark was descriptive of the products and services at issue in English-speaking countries, the CFI distinguished between:
- "employment agency services" and "temporary personnel services" in Class 35; and
- the other goods and services in Classes 9, 16, 41 and 42.
The court recalled that the board's decision was based on the definition of 'manpower' in the 1993 New Shorter Oxford English Dictionary. It concluded that MANPOWER was descriptive of "employment agency services" and "temporary personnel services" in the United Kingdom and Ireland. The CFI rejected Manpower's argument that other words (eg, 'staffing') could be used to describe the same services, as this did not put in question the fact that there was a direct link between the word 'manpower' and these services. The fact that others used the word 'manpower' for their commercial activities was irrelevant.
With regard to the other products and services, the CFI affirmed the board's decision that the mark was descriptive in the United Kingdom and Ireland for most of the goods and services concerned on the grounds that these goods and services may be used in connection with employment agency services by the public concerned. Insofar as those goods and services include goods and services which are unrelated to employment agency services, the CFI found that the mark was also descriptive based on the Audi Case
(Case T-16/02), since Manpower registered the MANPOWER mark for each group of goods and services as a whole. In light of this reasoning, applicants are advised to check thoroughly whether they should register their mark for whole classes of goods or services.
The CFI then examined whether the MANPOWER mark was descriptive in the other countries of the European Union. The CFI thus had to consider whether, in those countries, the mark in normal usage could designate the goods and services at issue, either directly or though its essential characteristics, from the point of view of the relevant public. This could be the case in two situations:
- The word 'manpower' is used in the country in question as a substitute for the local word, at least as far as the relevant public is concerned; or
- In the context of the goods and services at issue, English is used as an alternative to the national language to address the relevant public.
The CFI agreed with the Board of Appeal that in Germany and Austria, the word 'manpower' is descriptive since it is equivalent to the German word Arbeitskraft (workforce). Therefore, the relevant German consumers would establish a link between the word 'manpower' and employment agency services. With regard to the other products and services, the CFI considered that the same reasoning as that used for the United Kingdom and Ireland was valid.
With regard to the other countries, the Board of Appeal had held that the mark was descriptive in the member states where employers have a sufficient knowledge of the English language - that is to say, the Netherlands, Sweden, Denmark and Finland. The CFI disagreed, holding that the relevant public consisted of the entire population. It also noted that normal usage of the word 'manpower' might differ according to whether it is used by specialists in the field of human resources or by persons seeking employment. In addition, the CFI held that the board had failed to show that in the context of the goods and services in question, English was used as an alternative to the national language to address the members of the relevant public. Therefore, the board had erred in finding that 'manpower' was descriptive in those four countries. However, the CFI held that the board had correctly found that the mark was not descriptive in the remaining countries of the European Union.
Consequently, the board's decision was partially altered insofar as the mark was held not to be descriptive of the relevant products and services in the Netherlands, Sweden, Finland and Denmark.
The CFI then turned to the issue of whether the mark had acquired distinctiveness through use in the United Kingdom, Ireland, Germany and Austria. The CFI took into account the following factors:
- the market share of the mark;
- the territorial scope and length of use of the mark;
- the amount of money invested by Manpower in promoting the mark;
- the percentage of the relevant public which identified the goods and services concerned with a particular undertaking;
- statements made by chambers of commerce and professional associations; and
- consumer surveys.
The CFI pointed out that the distinctive character of a mark must also be assessed in light of the perception of the average consumer of the goods or services in question. The CFI recalled that the board had taken into account not only evidence of use before the filing date of the cancellation action, but also evidence that post-dated the filing date (but related to the period before that date). Based on the evidence before it, the CFI concluded that the board had correctly found that the mark had acquired distinctiveness through use in these four countries. Moreover, the fact that the mark had acquired distinctiveness for services in Class 35 was sufficient to prove that the distinctive character of the mark extended to other classes.
In a world where English is used as the international language of business, the decision highlights the fact that an English word used as a trademark in non-English-speaking countries may still lack distinctive character.
Richard Milchior, Granrut Avocats, Paris