Mark consisting of descriptive elements is not necessarily descriptive as a whole

In decision No 1556-o (October 26 2015), the Estonian Board of Appeal has upheld Rehvid 24 OÜ’s appeal against the decision of the Estonian Patent Office not to register the trademark REHVID24. The Estonian Patent Office may appeal to the Harju County Court within three months of the publication of the decision.

Rehvid 24 applied to register the word mark REHVID24 (meaning ‘tyres24’ in English) (Application No M201200807) for services relating to the sale of tyres, rims and automobile accessories, including over the Internet, in Class 35 of the Nice Classification. Rehvid 24 is Estonia’s leading retailer and wholesaler of car tyres.

The Patent Office refused to register the trademark REHVID24, stating that legal protection cannot be granted to signs which consist exclusively of sign or indications designating the kind, quality, quantity, intended purpose, value or geographical origin of the services, the time of rendering of the services, or other characteristics of the services (Clause 9(1)3 of the Trademarks Act). The Patent Office found that the mark was descriptive and lacked distinctiveness, as it indicated that services relating to car tyres were offered around the clock.

The applicant filed an appeal against this decision. The applicant based its appeal on Clause 9(2) of the act, which states that the provisions of Clause 9(1)3 do not apply:

• if, following the use of a trademark, it has acquired a distinctive character by the filing date of the application; and

• in the case of well-known trademarks.

The applicant presented evidence - consisting of statistics, polls and advertising materials - demonstrating that the trademark REHVID24 had been in use in Estonia for almost 10 years.

The Board of Appeal upheld the appeal and reversed the Patent Office’s decision.

The Board of Appeal explained that, for a trademark to be denied registration, the mark as a whole should lack distinctiveness or be descriptive. The board found that, if a mark consists of a combination of elements, the fact that each component in isolation is descriptive is insufficient to find that the trademark as a whole is descriptive. Because the mark REHVID24 as a whole is not a common way of referring to the offer, production or delivery of the goods/services at issue, the Board of Appeal found that the denial of registration was not justified, and thus annulled the decision of the Patent Office.

This decision is noteworthy in that it highlights the Patent Office’s duty to initiate the collection of evidence for the examination of a trademark application. If the Patent Office does not find any evidence which could prove that the mark has distinctive character, then the burden of proof does not automatically shift onto the applicant.

Anneli Kapp, Patendibüroo KÄOSAAR, Tartu