Mark descriptive of component can also be descriptive of product itself

In BSH Bosch und Siemens Hausgeräte GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-625/11, January 15 2013), the General Court has upheld a decision of OHIM rejecting a Community trademark (CTM) application for ECODOOR for various household appliances in Classes 7, 9 and 11 of the Nice Classification, finding that the mark was descriptive of an essential characteristic of the goods applied for, namely the ecological character of their doors.

BSH Bosch applied to register the mark ECODOOR in respect of household appliances falling within Classes 7, 9 and 11 (such as dishwashers, refrigerators and freezers) and in respect of components for such household appliances. OHIM refused the application at first instance and on appeal, holding that the mark applied for was descriptive and lacked distinctive character under Articles 7(1)(b) and 7(1)(c) of the Community Trademark Regulation (207/2009). In particular, OHIM found that the mark described an essential characteristic of the goods applied for, namely the ecological character of their doors. BSH Bosch appealed to the General Court.

BSH Bosch accepted that:

• the relevant public was made up of English-speaking consumers;
• the relevant public would distinguish the elements 'eco' and 'door';
• the word 'door' had its usual meaning in English; and
• the goods applied for included doors and consumed energy.

The only issues were therefore:

• the relevant public’s perception of the element 'eco' of the mark applied for; and
• whether ECODOOR, as a whole, was descriptive from the point of view of the public with respect to the goods applied for.

The General Court found that the prefix 'eco' was a common abbreviation for the word 'ecological' and was often used in marketing to indicate the ecological origin of products or the fact that they did not have any impact on the environment. OHIM’s Board of Appeal had therefore held rightly that the element 'eco' would be perceived by the relevant public as meaning 'ecological'. Consequently, as the element 'door' had its normal meaning, the Board of Appeal had rightly found that ECODOOR would be understood immediately by the relevant public to mean “a door the construction and mode of operation of which are ecological”.

Owing to a limitation of its initial list of goods applied for, BSH Bosch claimed that the mark no longer covered components of the various household appliances, such as doors, but only the appliances themselves. BSH Bosch argued, therefore, that the mark applied for was descriptive not of the goods applied for but, at most, of one of their components. Rejecting this argument, the General Court noted that a sign that was descriptive of the characteristic of a component incorporated in a product could also be descriptive of the product itself. This would be the case where, from the perception of the relevant public, the characteristic of the component described by the sign could have a significant impact on the essential characteristics of the product itself.

In the present case, it was clear that the mark applied for would be interpreted by the relevant public as meaning “a door the construction and mode of operation of which are ecological”. As the Board of Appeal found (and BSH Bosch accepted), the goods applied for could include doors. In these circumstances, the mark applied for could describe the ecological qualities of the door which the product in question was equipped with. Further, the ecological qualities of the door were important for the ecological character of the product on which it was installed.

The General Court commented that consumers were increasingly mindful of environmentally friendly manufacturing processes and the ecological qualities of goods, including their energy consumption. This was particularly true of the goods applied for as these consume energy. As BSH Bosch admitted itself, the ecological character was therefore an essential characteristic of these products. On this basis, the General Court found that the Board of Appeal was right to conclude that the mark applied for was descriptive of an essential characteristic of the goods applied for, namely their ecological character, in that it described the ecological qualities of the door installed on them.

Désirée Fields, McDermott Will & Emery UK LLP, London