No Community trademark for descriptive word combinations

European Union

By dismissing the appeal by German company DKV Deutsche Krankenversicherung to register 'Companyline' as a Community trademark for insurance and financial services, the European Court of Justice (ECJ) has set limits for the registration of combinations of descriptive words. This comes after recent court rulings seemed to have reduced the hurdles for registering such marks (see, for example, the Baby-Dry decision).

DKV applied for the mark at the Office for Harmonization in the Internal Market (OHIM) in July 1996. The application was rejected on the ground that it lacked distinctive character under Article 7(1)(b) of the Community Trademark Directive. The OHIM Board of Appeal upheld that decision, as did the Court of First Instance. Finally, the ECJ ruled that DKV's appeal was inadmissible and unfounded, and dismissed it.

The ECJ's decision makes it clear that word combinations, such as 'company line', which consist exclusively of two words that are customary in English-speaking countries, cannot be protected. The word 'company' suggests that the goods or services are intended for companies or firms. The word 'line' in the insurance and financial services sectors can denote 'branch of insurance' or 'line or group of products'. They are therefore generic words that simply designate a line of goods or services for undertakings. The ECJ endorsed the court of first instance's finding that:

"coupling them together, without any graphic or semantic modification, does not imbue them with any additional characteristic, such as to render the sign - taken as a whole - capable of distinguishing [the applicant's] services from those of other undertakings."

It would appear that the ECJ distinguished this case from the Baby-Dry Case based on the fact that in Baby-Dry, the distinctive character was substantiated by finding that the combination of the known words 'baby' and 'dry' would be unusual.

Friederike Bahr, KPMG Treuhand Beiten Burkhardt GmbH, Berlin

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