Nationally registered descriptive term blocks Community trademark

In Matratzen Concord GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld the OHIM's decision to refuse the registration of the Community trademark MATRATZEN MARKT CONCORD because of a prior registration of the mark MATRATZEN in Spain. The court held that the Spanish mark is valid even though 'matratzen' is a purely descriptive German word meaning 'mattresses'.

Matratzen Concord applied to the OHIM for the registration of the Community trademark MATRATZEN MARKT CONCORD. Hukla Germany SA, a Spanish company, opposed the registration based on the fact that it had previously registered the mark MATRATZEN in Spain. The OHIM upheld the opposition and refused registration.

Matratzen Concord appealed to the Court of First Instance arguing that the word 'concord' was the dominant element of the proposed trademark (as opposed to 'matratzen'), and that the Spanish trademark was invalid because the word 'matratzen' is a purely descriptive term in a significant part (ie, German speaking countries) of the European Union. 'Matratzen' has no meaning in Spanish. It argued that allowing parties to nationally register terms that have no meaning in the home country but are descriptive terms in other EU member states contravenes the rules on the free movement of goods set out in the EU Treaty.

The court disagreed and upheld the OHIM's decision. The court's ruling included the following findings:

• The rules on the free movement of goods do not prevent member states from registering trademarks that are purely descriptive in another EU language, and this descriptive character is entirely irrelevant in opposition cases.
  
  
• The relevant consumer group of the country in which the opponent's trademark is registered is decisive in assessing whether a mark is descriptive.
  
  
• The EU Treaty does not affect industrial property rights granted by the national laws of a member state.
  

This decision may have far-reaching consequences. It indicates that the registration of a descriptive term in a country where the consumers will not understand it as a descriptive term is valid and allows this term to be monopolized by a national registration in another country. This type of monopolization may well have an impact on the free movement of goods.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna