Neologism held to be descriptive of LEDs

European Union
In Cree Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-208/10, July 7 2011), the General Court has upheld the decision of the Second Board of Appeal of OHIM to refuse to register the mark TRUEWHITE on the basis that it was descriptive under Article 7(1)(c) of the Community Trademark Regulation (207/2009).
In April 2009 Cree Inc filed a Community trademark (CTM) application for the mark TRUEWHITE in respect of goods relating to lighting in Classes 9 and 11 of the Nice Classification, which was rejected in August 2009. On Cree's successive appeals, the board and the General Court upheld the decision on the basis that the mark was descriptive under Article 7(1)(c).

The General Court noted as follows:
  • The relevant public was the average English-speaking consumer.
  • Signs that have a close and direct link to specific goods or services and that make the relevant public perceive immediately and without hesitation that such signs describe one of the characteristics of such goods or services are descriptive (see MacLean Fogg v OHIM (Case T-339/05)).
  • Neologisms formed of elements that are descriptive in their own right, such as 'true' (ie, natural) and 'white' in relation to LED lamps, are deemed descriptive, except if the resulting combination is unusual or gives a sufficiently different impression from that of the straight addition of the elements. This was not the case of TRUEWHITE, from which consumers would infer that Cree's goods produce a white light similar to natural white light. It is relevant to consider grammatical and lexical rules when conducting such an analysis.
  • The fact that the neologism formed a word that is not listed in dictionaries did not change the analysis (see DKV v OHIM (Case T-19/99)).
  • At the appeal stage of proceedings, the General Court can only consider limiting the list of goods and services covered by an application to remove from the list one or more goods or services, and is not able to modify the specification of goods or services. Here, the General Court could not order white LEDs to be excluded from the list of goods covered by Cree's application, as it would result in modifying the specification of goods.
  • The fact that a mark is already registered in other countries is not relevant to its assessment with regard to the OHIM registration system, which is autonomous.
Cree is the owner of CTM registrations containing the word element 'truewhite'. In this application, there was no additional graphic or word elements to make the mark sufficiently distinctive, and the General Court reaffirmed the principles underlying the refusal to register a mark in the form of a neologism on the grounds of descriptiveness.

Julie-Anne Lucchetti and Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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