Metal marks appeal melts away

In Wieland-Werke AG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld the refusal to register SNTEM, SNPUR and SNMIX as Community trademarks.

Wieland-Werke AG applied to register the word marks for goods made of tin and tin alloys in Class 6 of the Nice Classification. The OHIM examiner rejected the applications on the grounds (i) of descriptiveness pursuant to Article 7(1)(c) of the Community Trademark Regulation, and (ii) that the marks were devoid of distinctive character under Article 7(1)(b). The OHIM Board of Appeal affirmed the decision.

On appeal to the CFI, Wieland denied that the signs SNTEM, SNPUR and SNMIX were merely descriptive of the goods covered by the applications and claimed that they did not, in the relevant sectors, directly or physically designate the quality or other characteristics of the goods concerned.

The CFI found that the goods ("metallic semi-finished products, especially in non-ferrous metals, in the form of sheets, strips, wires, tubes, sections, rods or the like, having a metallic coating on one side or both sides of tin or a tin alloy") were aimed at a public consisting of specialists in the sphere of metallurgy. Such specialists would find 'Sn' descriptive of 'tin' since it is the chemical symbol for that metal. It further held that these specialists would find that the 'TEM' suffix in the SNTEM mark referred to the English word 'tempered'. Thus, this element had to be regarded as descriptive of one of the characteristics of the goods for which registration was claimed. Similarly, the 'PUR' suffix was descriptive of 'pure', and Wieland did not dispute that the 'MIX' suffix referred to 'mixture'. The CFI, therefore, concluded that the marks SNPUR and SNMIX were descriptive of products made of pure tin and tin alloys, respectively.

Having found the marks descriptive, the CFI stated that it need not rule on whether they were also devoid of distinctive character pursuant to Article 7(1)(b).

Peter Gustav Olson, Plesner, Copenhagen