Neologisms are not necessarily novel, says General Court

European Union
In CheckMobile GmbH - The Process Solution Company v Office for Harmonisation in the Internal Market (OHIM) (Case T-14/10, March 24 2011), the General Court has upheld OHIM’s refusal to register the mark CARCHECK on absolute grounds.

In November 2008 CheckMobile GmbH - The Process Solution Company applied for the registration of CARCHECK for a range of goods and services in Classes 9, 16, 35, 36, 38, 41, 42 and 45 of the Nice Classification, namely the 'class headings' with some minor additions (ie, all goods and services in these classes, under the current practice at OHIM).

In March 2009 the OHIM examiner issued a partial refusal of the application in respect of some of the goods and services in Classes 9, 16, 38, 41, 42 and 45 under Articles 7(1)(b) and (c) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)) because the mark was descriptive and lacked distinctive character.

In May 2009 CheckMobile appealed in full against the decision, and in November 2009 the Fourth Board of Appeal of OHIM reversed the examiner’s decision in respect of “apparatus for recording, transmission and reproduction of sound or images; magnetic recording media” in Class 9, “printed matter” in Class 16, “telecommunications” in Class 38 and “creation and development of computer hardware” in Class 42.

The board’s reasoning was that these goods and services did not have a sufficiently direct link with the descriptive meaning of the combination of the words 'car' and 'check' because these goods and services were unlikely to be used primarily for the purposes of checking or inspection. For the remaining goods and services, the board rejected the appeal on the grounds that:
  • the mark conveyed a sufficiently clear and direct connection with the goods and services; and
  • the combination of the two words could designate characteristics of the goods and services relating to the checking or inspection of motor vehicles. 
CheckMobile appealed to the General Court in respect of the refusal by the board as far as Article 7(1)(c) was concerned (ie, the alleged descriptiveness of the mark). It argued that the board had interpreted the absolute ground too broadly and that:
  • 'carcheck' was a neologism capable of having distinctive character;
  • 'carcheck' was not a word found in English dictionaries; and
  • in relation to software, which was presumably key, the mark did not describe a function and did not evoke the checking of an automobile because software itself could not inspect an automobile without other computer components or recordal of the data by people.
As usual, the court set out the criteria for determining whether a mark is descriptive, and then addressed the specific issue of neologisms. With reference to the decisions in WINDVD CREATOR (Case T-105/06) and STEADYCONTROL (Case T-181/07), the court reiterated that a combination of descriptive words is in principle descriptive, unless the combination creates an impression sufficiently remote from that produced by the elements of which it is composed.

The court then stated that the mark at issue consisted of two English words conjoined in a grammatically correct manner and easily understood. It added that CheckMobile had not proved that the combination of the two words gave any new meaning to the mark, and agreed with the board’s statement that the absence of the mark from dictionaries was irrelevant because combining the words with no graphic element did not change the public’s perception.

The court then considered whether the mark was descriptive for the Class 42 services for which it had been refused, namely “creation and development of computer hardware”. Unsurprisingly, the court agreed with the board that the mark clearly referred to the inspection or checking of motor vehicles, adding that it could also be perceived as relating to checking the history of a second-hand vehicle on its purchase. The court concluded that the mark could designate certain characteristics of the Class 42 services.       
  
In relation to the other goods and services for which the board of appeal had upheld the refusal of the application, CheckMobile had not put forward any arguments on the basis of which the grounds of refusal could validly be contested, and had not placed doubt on the board’s assessment of the descriptive nature of the mark in relation to those goods and services. The court thus agreed with the board that the mark was descriptive of the goods and services and rejected CheckMobile’s appeal, making an award of costs against it.

It appears that CheckMobile did little to persuade the court that the mark was distinctive for the problematic goods and services. However, its submissions may have been lost, or at least shrunk, in translation. CheckMobile has, since this application, obtained registration of the stylised mark CM // CARCHECK as a Community trademark for similar goods and services, although the registration does not cover Class 42.

Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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