Mark rejected due to sufficiently direct and specific relationship with services

European Union
In hofherr communikation GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-77/09, March 9 2010), the General Court has issued its decision in an appeal by hofherr communikation GmbH against the decision of the First Board of Appeal of OHIM not to register the word mark NATURE WATCH.
hofherr is the proprietor of the international mark (designating the European Union) NATURE WATCH (Registration 957541) for:

  • "arranging and organizing of cultural and sportive events; sport camp services; providing recreation facilities; recreation information; rental of audio equipment; rental of sports equipment" in Class 41 of the Nice Classification; and
  • "hotels; boarding and lodging; rental of tents; tourist homes" in Class 43.
OHIM refused the application for registration, considering that the trademark did not comply with Article 7(1)(b) and (c) and 7(2) of the Community Trademark Regulation (40/94) (now amended by Community Trademark Regulation (207/2009)). hofherr appealed to the First Board of Appeal of OHIM.
The board dismissed the appeal. It found that that the term 'nature watch' designates the act of watching, keeping awake and being vigilant for the purposes of observing nature. As such, the sign was descriptive of the services at issue under Article 7(1)(c) of the regulation, and indicated to the public that the services and equipment concerned were suitable for nature observation. The board also found that the services were offered in the context of enhancing an understanding of nature and that the sign would be perceived as promoting this fact, rather than indicating the commercial origin of the services. Accordingly, the mark was held to be devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation.
On appeal to the General Court, the meaning attributed by the board to ‘nature watch’ was not disputed, but hofherr contended that:
  • the expression was not purely descriptive of the services covered by the mark;
  • there was no immediate association between the words and the services sought; and
  • the mark was inventive in the context of the relevant services.
The court found that a consumer would be likely to perceive the mark descriptively. It considered the mark as it applied to each of the indicated services and held in each case that the service offered could be provided in relation to nature observation. Therefore, consumers would immediately perceive the mark as enhancing or enabling nature observation in relation to each of those activities. As a result, the court found that the board was correct in refusing registration under Article 7(1)(c) and that it was unnecessary to consider Article 7(1)(b).
Alistair Payne, Matheson Ormsby Prentice, Dublin

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