No perceptible difference between neologism and mere sum of its elements

European Union
In Geemarc Telecom International Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-59/10, November 23 2011), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that the trademark AMPLIDECT was invalid in respect of goods in Class 9 of the Nice Classification.

On May 25 2005 Geemarc Telecom International Ltd obtained the registration of the Community trademark AMPLIDECT (Registration 3603883) for goods in Classes 9 and 16. German company Audioline GmbH filed an application for a declaration of invalidity of the mark pursuant to Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009), arguing that the mark was descriptive and lacked distinctive character. On June 10 2009 the Cancellation Division of OHIM dismissed the application for a declaration of invalidity and ordered Audioline to pay the costs of the proceedings.

In August 2009 Audioline appealed against the decision of the Cancellation Division. The Second Board of Appeal of OHIM upheld the appeal, holding that the mark was invalid in respect of all the goods in Class 9. The board based its assessment mainly on French-speaking consumers, pointing out that, in the French language, it was not uncommon to combine an abbreviation such as 'ampli' (amplifier) and an acronym such as DECT (Digital Enhanced Cordless Communication). The board concluded that there was no perceptible difference between the mark AMPLIDECT, taken as a whole, and the sum of the two elements of which it is composed. It followed that the mark was descriptive and lacked distinctiveness.

Geemarc appealed to the General Court, seeking the annulment of the board's decision. Geemarc alleged:
  • that the board had erred in law by not restricting its examination to the evidence and arguments put forward before the Cancellation Division;
  • infringement of Articles 7(1)(b) and (c) of the regulation; and
  • that, in any case, AMPLIDECT had acquired distinctiveness trough the use which had been made of it.  
Before the court, Geemarc tried to demonstrate that its mark was not descriptive: it had previously produced a semantic study of the term ‘ampli’ carried out by the University of Nancy (France) in order to prove the difference between the neologism AMPLIDECT and the sums of its parts. In contrast, the Board of Appeal stated that the mark, in the view of the relevant public, described an amplificatory function incorporated in a phone using DECT technology, which is characteristic of the goods at issue. Since it was descriptive, the mark was also devoid of any distinctive character.  

Geemarc also tried to demonstrate that the term 'DECT' did not necessarily evoke a phone for the relevant public, and that DECT technology has different applications, such as television and radio. Moreover, the AMPLIDECT mark, taken as a whole, did not create a direct link with the telephones marketed by Geemarc. 

The court observed that the relevant public consisted of persons suffering from impaired hearing, who will have a high degree of attention when purchasing the goods at issue. From the point of view of the relevant public, AMPLIDECT would naturally evoke a sound amplification function attached to a telephone and, consequently, one of the essential functionalities of the goods concerned.

Further, the court pointed out that the assessment of the distinctive character of a mark must be based on the mark’s ability to distinguish the mark owner's goods or services on the market from good or services of the same type offered by competitors. The fact that the mark AMPLIDECT had been the subject of a previous Benelux registration was irrelevant.
 
Finally, according to the court, the fact that the mark AMPLIDECT had been used on telephones marketed by Geemarc in Belgium, Denmark, Germany, Greece, France, Ireland, Italy and Finland was insufficient to show that the mark had acquired distinctiveness through use, as Geemarc had not provided any documents to justify the proportion of the turnover achieved on the French market.

The court thus dismissed the action and ordered Geemarc to pay the costs.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan 

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