Neologism held to be descriptive of certain goods in Classes 1 and 4

European Union
In Interflon BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-200/08, September 29 2010), the General Court has annulled, in part, a decision of the Second Board of Appeal of OHIM and concluded that the mark FOODLUBE was descriptive of certain goods. 
 
In 2000 Illinois Tool Works Inc filed an application for the registration of FOODLUBE as a Community trademark for goods in Classes 1 and 4 of the Nice Classification. The mark proceeded to registration. In November 2004 Interflon BV filed an application for a declaration of invalidity of the mark for all goods in Classes 1 and 4. The Cancellation Division of OHIM rejected the action, holding that FOODLUBE was not descriptive and was sufficiently distinctive. Interflon appealed, restricting its claim to specific goods - namely, chemicals used in industry, chemical substances for preserving foodstuffs, industrial oils and greases and lubricants. The Second Board of Appeal of OHIM dismissed the appeal. Interflon appealed to the General Court.
 
Interflon's first plea was that FOODLUBE was descriptive and, therefore, the board's decision infringed Article 7(1)(c) of the Community Trademark Regulation (40/94). Interflon argued that FOODLUBE was a neologism consisting of two descriptive words which merely described food-grade lubricants (lubricants used in the food industry). Interflon further argued that FOODLUBE should be cancelled under the principle of non-discrimination, as OHIM had rejected applications for TECHLUBE and CARLUBE. Interflon alleged that, even though FOODLUBE might not have been used as a descriptive term when the application was filed, it was reasonably foreseeable that the term could be used descriptively in the future.

The General Court first reiterated that Article 7(1)(c) precludes the registration of signs and indications which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. The court also reiterated that there must be a sufficiently direct and specific relationship between the mark and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics. The court further stated that neologisms could be registered only if the combination had an unusual nature or if the mark created an impression which was sufficiently far removed from that produced by the mere combination of the descriptive meanings of its elements. In other words, the neologism must be “more than the sum of its parts”.

The court believed that the relevant public consisted of English-speaking professionals in the food-processing industry. The court disagreed with the Board of Appeal that FOODLUBE could be understood by the relevant public as referring only to a lubricant for foodstuffs. The court pointed out that the expression 'food-grade lubricants' is commonly used to designate products which are used to lubricate machinery found in environments where accidental contact with foodstuffs is likely. The court believed that FOODLUBE could thus be understood by the relevant public as meaning 'food-grade lubricant' or as an abbreviation of this term. As FOODLUBE is not more than the sum of its parts, the court came to the conclusion that there was a sufficient direct and specific relationship between the mark and the goods at issue.

The court then examined each of the specific goods. With respect to industrial oils and greases and lubricants in Class 4, the court easily found, in light of its previous findings, that there was a sufficiently direct and specific relationship between FOODLUBE and those goods. The fact that research carried out on the internet suggested that FOODLUBE was not used descriptively when the application was filed was irrelevant. The court referred to the clear wording of Article 7(1)(c), which indicates that it is sufficient that the mark could be used descriptively.

The court then turned to the goods in Class 1 and first examined chemicals used in industry. As one of the possible definitions of 'foodlube' could refer to food-grade lubricants, the court believed that there was a sufficiently direct and specific relationship between the mark and chemicals used in industry. Hence, FOOLDLUBE was also descriptive of those goods. With respect to chemical substances for preserving foodstuffs in Class 1, the court came to a different conclusion. It believed that Interflon had not produced sufficient evidence to demonstrate that FOODLUBE was descriptive of these goods.

Interflon's second plea was that FOODLUBE was devoid of any distinctive character. The court did not have to examine this issue with respect to chemicals used in industry, industrial oils and greases and lubricants, as it had already found that FOODLUBE was descriptive of those goods. It could thus limit the examination to chemical substances for preserving foodstuffs in Class 1.

The court reiterated that distinctive character must be assessed, first, by reference to the products or services and, second, by reference to the perception of the relevant public, who is reasonably well informed and reasonably observant and circumspect. The fact that FOODLUBE consisted of components which may allude to the goods for which it is registered and that the combination of those components complied with linguistic rules was not sufficient to justify the application of Article 7(1)(b) of the regulation. The court required further proof that the mark, examined as a whole, would not enable the target public to distinguish the mark owner's goods from those of its competitors. With respect to chemical substances for preserving foodstuffs, the court again stated that Interflon had not proven that FOODLUBE was generic or usual with regard to these goods. The court thus agreed with the board that FOODLUBE was distinctive in respect of these goods.

The court also addressed two procedural aspects:
  • It reiterated that it can review only the legality of the board's decisions and, therefore, would not take into account any new factual evidence submitted for the first time before it.
  • With respect to non-discrimination, the court stated that the lawfulness of the board's decisions must be assessed solely on the basis of the regulation, and not on the basis of earlier practice. It is settled case law that the principle of equality of treatment cannot be invoked in relation to unlawfulness, since no person may rely on an unlawful act committed in favour of another.
The action for a declaration of invalidity was thus successful with respect to chemicals used in industry in Class 1, and industrial oils and greases and lubricants in Class 4, but was unsuccessful with respect to the other goods. The decision is convincing with respect to the goods for which the action was successful. The thorough analysis made by the court is correct, even though one does not necessarily have to follow its line of argumentation with respect to chemical substances for preserving foodstuffs.

However, the decision does not resolve the common problem faced by applicants and practitioners that identical or very similar marks are treated differently by OHIM. Ultimately, it should be the goal and duty of OHIM to treat identical or similarly structured marks in the same way or, at the very least, to explain to the applicant why its mark is being treated differently. Although it might be correct, from a strictly legal point of view, that each case must be assessed solely on its own merits and that applicants cannot rely on an unlawful act committed in favour of another, one cannot avoid feeling frustrated on behalf of applicants.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg

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