Mark consisting of adverb and geographical term held to be descriptive
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In Mövenpick Holding v Office for Harmonisation in the Internal Market (OHIM) (Case T-377/09, December 15 2011), the General Court has upheld OHIM’s refusal on absolute grounds to register the word mark PASSIONATELY SWISS.
In February 2008 Mövenpick Holding applied to register PASSIONATELY SWISS as a Community trademark (CTM) for goods and services in Classes 16, 35, 41, 43 and 44 of the Nice Classification. The goods and services included:
- paper goods and printed matter in Class 16;
- retail, advertising and marketing services in Class 35;
- education and entertainment services in Class 41;
- restaurant and hotel services in Class 43; and
- medical and veterinary services, and health and beauty care services in Class 44.
In August 2008 the OHIM examiner rejected the application on the grounds that PASSIONATELY SWISS was descriptive within the meaning of Article 7(1)(c) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)) on the basis that PASSIONATELY SWISS designated the geographical origin of the goods and services in question. Furthermore, the OHIM examiner refused registration because the mark was devoid of any distinctive character pursuant to Article 7(1)(b).
This decision was upheld by the First Board of Appeal of OHIM in July 2009. Mövenpick appealed to the General Court. It raised two pleas: infringement of Article 7(1)(c) and of Article 7(1)(b). Mövenpick sought to have the court amend the contested decision so as to order the registration of PASSIONATELY SWISS as a CTM. Alternatively, it requested that the court annul the contested decision and refer the case back to OHIM for further consideration.
The General Court first assessed the admissibility of the claims. It held that the claim seeking alteration of the decision of the Board of Appeal and registration of the mark was inadmissible, since the court did not have the power to take cognisance of an application to be registered as a CTM.
The General Court went on to consider the merits of the claim for annulment of the Board of Appeal’s decision. It found that, for the purposes of an assessment of the mark’s registrability, the relevant public was not the Swiss public. Contrary to Mövenpick’s view, the court held that the assessment had to be based on the whole or part of the European Union. Since Switzerland is not an EU member state, the court confirmed the Board of Appeal’s view that the relevant public consisted of all consumers in the EU member states capable of understanding the English words 'passionately' and 'Swiss'.
The General Court further upheld the Board of Appeal’s decision that the mark PASSIONATELY SWISS consisted of an indication of geographical origin within the meaning of Article 7(1)(c). Contrary to what Mövenpick argued, the word 'passionately' did not alter the descriptiveness of the mark as a whole. The court agreed with the Board of Appeal that the combination of 'passionately' and 'Swiss' was not inventive, but only reinforced the concept of the mark as a laudatory and promotional statement regarding the quality of Swiss products.
The General Court dismissed Mövenpick’s claim that OHIM had not shown a sufficient link between the indication of geographical origin and the goods and services for which registration was sought. In that respect, the key issue for the court was the conclusion that the geographical indication, 'Swiss', referred to Switzerland as a whole. As the geographical name Switzerland is widely known as a state as well as for the high quality of the country’s products, OHIM had met the requirements for a proper assessment under Article 7(1)(c) by merely acknowledging the existence of the link between the geographical indication and the goods and services. It was therefore not necessary to carry out the assessment for each specification of goods and services individually.
The General Court thus dismissed Mövenpick’s appeal regarding the alleged infringement of Article 7(1)(c). Since the registration of a CTM must be rejected if there exists at least one absolute ground for refusal, the court felt it was not necessary to consider the second plea under Article 7(1)(b).
This case serves to highlight that it will be difficult for CTM applicants to register a mark which consists of a geographical indication when the term is widely known in the European Union. This is particularly true where the geographical term is combined with an adverb which itself serves to amplify the laudatory statement of the term as a whole.
Florian Traub, Squire Sanders (UK) LLP, London
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