Name of exercise method cannot be registered, even if it is not yet commonly used

In Kaatsu Japan Co Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-567/12, November 7 2014), the General Court has confirmed a decision of the Second Board of Appeal of OHIM and rejected an application to register the word mark KAATSU as a Community trademark (CTM), finding that it was descriptive of a particular exercise method.

On August 5 2011 Kaatsu Japan Co Ltd filed a CTM application for the word mark KAATSU for goods and services in Classes 9, 10, 16, 28, 41 and 44 of the Nice Classification.

The applicant was informed by the examiner that the mark applied for was not eligible for registration pursuant to Article 7(1)(b) and (c) and Article 7(2) of the Community Trademark Regulation (207/2009) in respect of the goods and services covered by the application. The examiner held that the word 'Kaatsu' could be understood in most European languages by the relevant public (being the general public in Europe) and that, in his view, the word was used to describe a method of physical exercise. Although the applicant replied that the mark applied for had been created by its chairman and that all the internet articles produced by the examiner were references to that mark (from which the applicant inferred that the mark was distinctive), the examiner rejected the application.

By decision of October 9 2012, the Second Board of Appeal of OHIM dismissed the appeal. The board agreed with the examiner and held that the term 'Kaatsu' referred to an exercise method or technique which induces muscle hypertrophy and increases muscle strength (essentially by applying a controlled reduction of blood flow to the muscles exercised by means of compressing the proximal vasculature and related areas), and informed the consumer directly and without the need for further reflection about the goods and services in question. Therefore, the mark applied for was descriptive within the meaning of Article 7(1)(c) of the regulation.

The court agreed with the Board of Appeal, stating that the relevant public in this case included not only the general public, but also a specialist public, in particular, professionals and companies specialised or operating in the medical field, trainers and fitness centres for personal training and body-building. According to the court, the mark applied for would be understood by this public as containing direct information as to the nature and subject-matter of the goods and services at issue (namely, goods or services whose purpose is to induce, by a method or through exercises, muscle hypertrophy and to increase muscle strength in a certain manner).

Since the term 'Kaatsu' can be used to designate a particular method or technique of physical exercise and thus to inform the consumer, the court ruled that the term must remain available for public use and not become the subject of a monopoly, even if the term is not yet commonly used:

“In any event, it must be recalled that it is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation No 207/2009 actually be in use at the time of the application for registration in a way that is descriptive of the goods or services in respect of which the application is filed, or of characteristics of those goods or services. It suffices, as the wording of that provision itself indicates, that the signs and indications could be used for such purposes (see... Prana Haus v OHIM (C-494/08 P)..., Paragraph 52 and the case-law cited, and... Prana Haus v OHIM (PRANAHAUS), (T-226/07),... Paragraph 36).”

The case shows that, for an application to be rejected as descriptive, there is no need for an actual descriptive use of the sign or indication at the time of the application - it is sufficient that a sign or indication can be used as such.

Kaatsu’s action was dismissed.

Moïra Truijens, Hoogenraad & Haak, Amsterdam