No credit given to giropay’s arguments on distinctiveness

European Union

In giropay GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-399/06, January 21 2009), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had held that the mark GIROPAY was descriptive in relation to the goods and services applied for and that it lacked distinctiveness.

In September 2002 the predecessor of giropay GmbH applied for the registration of GIROPAY as a Community trademark (CTM) for goods and services in Classes 9, 36, 37, 38 and 42 of the Nice Classification. In February 2005 the OHIM examiner rejected the application in relation to the goods and services in the following classes:
  • Class 9 ("data processing equipment and programs; data processing equipment and programs for banks and providers of financial services, in particular in the context of formal election of domicile, monetary and financial derivatives, business transactions, payment transactions, and asset, document and workflow management"); and
  • Class 36 ("insurance, financial transactions, monetary transactions, real estate transactions, financial services, banking transactions, account management, issuance of credit, debit, monetary and other cards in the context of Class 36 services").
In October 2006 the Fourth Board of Appeal upheld the examiner’s decision on the grounds that the mark was descriptive of the relevant goods and services and that it lacked distinctiveness. giropay appealed to the CFI.
The CFI reiterated its case law that a mark will be descriptive where:
  • there is a sufficiently direct and concrete link between the mark and the relevant goods and services; and
  • the relevant public will perceive the mark, immediately and without any further thought, as a description of the goods and services or their characteristics.
The CFI agreed with the Board of Appeal that both 'giro' and 'pay' were descriptive (as they are common terms with a precise meaning) for the relevant consumers - namely, financial institutions and the average English-speaking consumer of financial services.
giropay argued that the combination of two descriptive components did not imply that the mark lacked distinctiveness. As a combination of two common words, 'giro' and 'pay', the mark was easier to remember for the relevant consumer. However, as a neologism with a degree of invention, the mark would still be perceived by the relevant consumer as a trademark and would thus be distinctive, rather than descriptive. This argument illustrates a certain blurring, highlighted in previous cases, of the line between the concept of distinctiveness and that of descriptiveness (for further details please see "CFI dispenses registrability advice in PHARMACHECK Case").
The CFI’s analysis followed the same path as in Korsch AG v OHIM (Case T-296/07) and Hansgrohe AG v OHIM (Case T-307/07), which were also issued on January 21 2009. The main points were as follows:
  • As regards the descriptiveness of neologisms, the fact that the different components of a mark are descriptive does not in itself mean that the mark as a whole is descriptive. However, it amounts to a rebuttable presumption that this is the case. There was nothing unusual, grammatically or otherwise, in the combination of 'giro' and 'pay'. Therefore, the impression created by the mark as a whole was not sufficiently removed from that created by the mere combination of its components to rebut the presumption.
  • As regards distinctiveness, the mark did not contain any creative element that would enable consumers to identify it with the goods and services of giropay.
  • For the registration of a mark to be refused, it is sufficient that one possible meaning of the mark may be used to describe a quality of the relevant goods.
  • The CTM regime is wholly independent from any national system. Neither OHIM nor the CFI were bound by the decisions and case law of national courts.
giropay also argued that registration should not be refused where the descriptiveness of a mark is revealed only through analytical interpretation and indirect association. The CFI rejected this argument. Although the reasoning of the Board of Appeal was analytical and detailed, it demonstrated that the mark described clearly and unambiguously certain characteristics of the relevant goods and services, thereby directly indicating their nature and use to the relevant consumers.

Marine Baudriller, Hammonds LLP, London

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