Neologisms made of descriptive words must be syntactically unusual to be registrable

European Union

In Spectrum Brands (UK) Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-544/11, January 16 2013), the General Court has raised the standards for the registration of trademarks consisting of potentially descriptive elements. The trademark at issue in this case was STEAM GLIDE (No 5167382), covering “electric irons, electric flat irons, electric irons for ironing clothes, parts and fittings for the aforementioned goods” in Class 9 of the Nice Classification.

At first OHIM accepted the application for registration of the mark and duly registered it. However, Koninklijke Philips Electronics NV subsequently filed a request for a declaration of invalidity of the mark on the grounds, among others, that it had been registered in breach of Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009). This led the General Court to consider the relationship between these two provisions - namely, whether a trademark that is descriptive also necessarily lacks distinctiveness.

The trademark STEAM GLIDE is a neologism, as established in this decision. The court, however, also held that the words making up this neologism are descriptive of characteristics of the goods covered. The argument of the trademark owner was that the mark appeared to be syntactically unusual. As stated by the Board of Appeal, there is nothing unusual about the combination of a noun and a verb. However, the examples given by the General Court in connection with the word 'steam' were not very convincing: 'steam iron' looks like the combination of two nouns, while in the expression 'steam clean', the word 'clean' seems to be an adverb. On the other hand, the English word 'glide' can be a verb or a noun. If the expression combines a verb and a noun, the English language generally uses the verb in a different form (eg, 'shopping bag' or 'sleeping bag'). All the examples given by the General Court were words or word combinations which are in general use, such as 'steam chamber', 'steam kitchen', 'steam oven' or 'steam pipe'. However, the expression 'steam glide' is arguably a neologism.

Therefore, it must be concluded from this decision that a trademark consisting of words that may be used to describe the characteristics of the goods will not be allowed for registration as a trademark. even though the combination of the words is new and unusual.

Another argument brought forward by the trademark owner was that there was no real, current or serious need to leave the trademark free for the benefit of third parties. The General Court held that, although the purpose of Article 7(1)(c) is to prevent the monopolisation of descriptive words so that they may be freely used by all, one cannot turn this principle around by stating that descriptive signs should be accepted for registration if there is no real, current or serious need for third parties to use them. This principle, known as 'Freihaltebedürfnishas', has been applied extensively in Germany and Austria in the past, but was abolished in these countries after their trademark laws were harmonised with EU law. This argument is still used in those countries in some cases, but this is exceptional and not consistent with the harmonised trademark laws.

Finally, the General Court held that the scope of Article 7(1)(b) overlaps with the scope of 7(1)(c), but only to the extent that a word mark which is descriptive of characteristics of the goods or services covered, and therefore falls under Article 7(1)(c), is “necessarily devoid of any distinctive character in relation of those goods and services for the purposes of Article 7(1)(b)”.

The lesson to be learned from this decision is that a neologism consisting of descriptive words must be syntactically unusual in order to be registrable. The BABY DRY times seem to be definitely over.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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