Nike’s application rejected on grounds of descriptiveness

European Union
In Nike International Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-512/10, September 21 2011), the General Court (Third Chamber) has upheld a decision of the Fourth Board of Appeal of OHIM confirming the rejection of the Community trademark (CTM) application for the word mark DYNAMIC SUPPORT for goods in Class 25 of the Nice Classification (footwear). The court found that the Board of Appeal had been right in considering that the expression 'dynamic support' was descriptive for footwear and would be perceived by consumers, without further thought, as an indication that the footwear provides dynamic and adapted support.

On May 14 2009 US company Nike International Ltd applied for the registration as a CTM of the word mark DYNAMIC SUPPORT in Class 25. The application was first rejected on February 18 2010 by the OHIM examiner on the grounds that the mark was descriptive with respect to the goods covered. The Fourth Board of Appeal of OHIM then dismissed Nike's appeal against the examiner’s refusal.

Before the General Court, the applicant raised a single plea alleging infringement of Article 7(1)(c) of the Community Trademark Regulation (207/2009).

The court observed that Article 7(1)(c) pursues an aim which is in the public interest - namely, that descriptive signs or indications relating to the characteristics of goods or services covered by a registration may be freely used by all. Since those signs may serve in normal usage, from the point of view of the relevant public, to designate the goods or services in respect of which registration is sought, the descriptiveness of a mark can be assessed only by reference to the goods or services concerned and to the way in which it is understood by the relevant public.

As regards the relevant public, the court observed that, in the case at hand, it would include not only consumers of English-speaking member states, but also non-English-speaking consumers who would understand the meaning of the mark, which is made up of English words that are relatively common and similar in several languages. The court also pointed out that, under Article 7(2) of the regulation, Article 7(1) applies even if the grounds for refusal exist in only part of the European Union. Moreover, the court remarked that registration is excluded if the mark is descriptive in one of the official languages of the European Union.

With regard to distinctiveness, the court observed that the mark consisted of the terms 'dynamic' and 'support', which were themselves descriptive, and whose combination was not an unusual expression likely to create an impression that was sufficiently far removed from that resulting from the mere combination of meanings of those two elements. Furthermore, the court ruled that the fact that the mark could have several meanings did not prevent the application of the absolute ground for refusal provided for in Article 7(1)(c). In this respect, the court referred to settled case law under which a word mark must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

The court thus rejected Nike's plea in law, ordered the latter to pay the costs and dismissed the action in its entirety.
 
Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan Italy

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