Mark rejected even though first part already registered as CTM
In Actega Terra GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-118/08, June 15 2010), the General Court has refused to register the word mark TERRAEFFEKT MATT & GLOSS as a Community trademark (CTM) for “lacquers, in particular for the graphic industry” in Class 2 of the Nice Classification.
The application for the registration of TERRAEFFEKT MATT & GLOSS was rejected by the OHIM examiner in 2007 and by the First Board of Appeal in 2008 on the grounds that the mark was descriptive and devoid of distinctive character, being no more than a combination of the descriptive terms 'terra' (Latin for 'earth'), 'effekt” (German for 'effect'), 'matt' (German for 'matte') and 'gloss'.
The applicant, Actega Terra GmbH, appealed to the General Court, arguing as follows:
- The word element 'Terraeffekt' is not descriptive for the relevant public - that is, professionals in the graphic arts industry. The fact that the wording of the mark alludes to the characteristics of the goods in question was insufficient.
- The Board of Appeal had erred in not taking into account the earlier CTM TERRAEFFEKT (Registration 4209541).
- The German-speaking public does not know the English word 'gloss', while the English-speaking public does not know the German word 'matt'. Therefore, both words were not descriptive.
- The combination 'matt & gloss' is fanciful because, in general, coatings are either glossy or matte, but not both.
- The non-descriptive element 'terraeffekt' is dominant because it is the first element of the mark, is written in capital letters and is already registered as a trademark.
The General Court first referred to former case law (see LOKTHREAD (Case T-339/05)), according to which a neologism or the combination of several descriptive words will not be descriptive if there is a perceptible difference between the neologism or the word created and the sum of its parts. A mark must create an impression which is sufficiently far removed from merely combining the meanings of its parts, such that the combination produces “something more”.
The court further stated that the mark at issue contained two elements, the second of which included a German and an English word. Therefore, the relevant public consisted of the English and German public, and it was sufficient that the terms were descriptive for one of them. Moreover, the relevant public consisted of professionals working in the graphic arts industry. According to the court, the words 'terra' and 'effekt', as well as their simple combination, enabled the German public to identify immediately and without further consideration the description of a fundamental characteristic of the goods in question - namely, the fact that their use creates a particular appearance (an 'earthy' effect).
In addition, the court pointed out that the registration of the CTM TERRAEFFEKT was not binding: it is settled case law that the legality of the decisions of the boards of appeals of OHIM is assessed only on the basis of the Community Trademark Regulation (40/94), as interpreted by the EU courts, and not by reference to prior decisions of the boards.
The court also noted that the words 'matt & gloss' would be perceived as descriptive terms by both the English and the German public. For example, German-speaking consumers know the word 'lip gloss'.
Finally, the court held that the overall impression of the mark was characterized not only by the element 'Terraeffekt', but also by all the elements taken together. The second element 'matt & gloss' was not negligible, since it consisted of three short, easily remembered words that contributed to the overall impression of the mark.
Although it is true that prior registrations are not binding on the EU courts, different findings in cases involving similar marks do not contribute to a consistent CTM system.
Friederike Bahr, Beiten Burkhardt, Munich
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