Mark refused under Article 7(1)(b) - but should it have been under Article 7(1)(c)?

European Union

In International Engine Intellectual Property Company LLC v Office for Harmonisation in the Internal Market (OHIM) (T-248/11), the General Court has upheld a decision of the Second Board of Appeal of OHIM to refuse registration of the trademark PURE POWER for goods in Class 12 of the Nice Classification due to its lack of distinctive character under Article 7(1)(b) of the Community Trademark Regulation (207/2009).

Prior to reaching the General Court, the trademark had been refused by both the OHIM examiner and the Board of Appeal. The application covered, among other things, engines and engine parts. The Board of Appeal held that the word sign PURE POWER would be immediately understood as meaning that the engines or engine parts produce "sheer energy for motion" or "clean energy". These meanings were not necessarily contradictory insofar as engines may produce energy free from pollutants while enabling the vehicle to travel at high speeds. For this reason, the Board of Appeal found that the sign PURE POWER was devoid of distinctive character within the meaning of Article 7(1)(b) of the regulation for goods in Class 12. Therefore, the board did not rule on the question of descriptiveness.

In its appeal before the General Court, the applicant argued mainly that the expression ‘pure power’ was a fanciful phrase which would require imagination and thought on the part of the relevant public in order to identify the nature of the goods concerned. This was, according to the applicant, sufficient to render the mark distinctive. The applicant did not, however, dispute the Board of Appeal’s finding that the expression ‘pure power’ may convey at least one of the two meanings found by the board, namely ‘sheer energy’ or ‘clean energy’.

The General Court based its assessment on earlier case law stating that it is sufficient, for finding that there is a lack of distinctive character within the meaning of Article 7(1)(b), that the semantic content of the word mark indicates a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information and will be perceived as such. It was therefore necessary to determine whether the association between the semantic content of the sign as determined by the Board of Appeal and the goods in question was sufficiently direct and concrete to prove that the sign enables to the relevant public to identify those goods immediately. After having set out the relevant criteria for the assessment, the General Court dismissed all of the applicant’s arguments and endorsed the Board of Appeal’s findings, concluding that the combination of the terms ‘pure’ and ‘power’ conveys a clear and unambiguous meaning.

While the outcome of this case is unsurprising and well founded, the initial legal basis for the refusal deserves some discussion - namely, why was Article 7(1)(b) applied rather than Article 7(1)(c)? The arguments used to support the refusal relate quite clearly to the way in which the expression ‘pure power’ may describe a certain technical characteristic of the goods in question - that is, the ability to operate on, or generate, clean energy. A question such as this regarding the ability of a mark to describe a technical feature of the goods in question would fall more intuitively under the concept of descriptiveness rather than that of a general lack of distinctive character.

Arguably, in the interest of keeping at least some degree of separation between the articles concerning descriptiveness and distinctiveness, marks such as this one should be assessed under Article 7(1)(c). While it is clear that a descriptive mark also lacks distinctive character, the application of Article 7(1)(b) would best be left to cases where the mark must be refused on grounds other than its descriptive character.

Jukka Palm and Kristian Sjöblom, Berggren Oy Ab, Helsinki

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