MMS MEDIABOX held to be descriptive

The Board of Appeal has upheld a decision of the Estonian Patent Office in which the latter had refused to register the trademark MMS MEDIABOX for certain goods and services (Case 1029-o, September 29 2009).
Deutsche Telekom AG filed an application for the registration of the mark MMS MEDIABOX for goods and services in Classes 9, 16, 35, 36, 38 and 42 of the Nice Classification.
The office allowed the registration of the mark only for goods in Classes 16 and services in Class 36. With regard to the other goods and services, the application was rejected on the grounds that the mark was descriptive and lacked distinctive character under Articles 9(1)(2) and (3) of the Estonian Trademark Act.
Deutsche Telekom claimed that the mark was registrable for all the goods and services covered by the application. It argued that because the term 'mediabox' has no meaning in Estonian, the average consumer would recognize it as a trademark. Deutsche Telekom also pointed out that the term 'mediabox' cannot be found in any dictionary or encyclopedia. In addition, it submitted that the trademark was registered in Germany and should thus be examined under Article 6quinquies A(1) of the Paris Convention for the Protection of Industrial Property.
However, the office found that MMS MEDIABOX designated the kind and intended purpose of the goods and services. Therefore, the average consumer would perceive the mark as indicating "programs, devices and services in relation to multimedia messages". Additionally, the office highlighted the fact that all descriptive signs must be kept free for use by competitors. As the mark contained no distinctive elements, Article 6quinquies A(1) could not apply. The office pointed out that the fact that the mark was registered in Germany did not mean that it should automatically be registered in Estonia. It stressed that the registration practice of other countries is not binding on Estonia.
Deutsche Telekom appealed.
After examining the evidence, the Board of Appeal agreed with the findings of the office, concluding that MMS MEDIABOX could not be registered based on absolute grounds for refusal.
Deutsche Telekom may appeal to the Harju County Court within three months of the decision.
Kärt Laigu, Käosaar & Co, Tallinn

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