Number is up for numeral marks at the CFI

European Union
In Agencja Wydawnicza Technopol sp zoo v Office for Harmonization in the Internal Market (OHIM) (Case T-298/06, Joined Cases T-64/07 to 66/07, Joined Cases T-200/07 to 202/07 and Joined Cases T-425/07 and T-426/07, November 19 2009), the Court of First Instance (CFI) has upheld OHIM’s refusal to register nine marks consisting of a combination of numerals.

In 2004 Agencja Wydawnicza Technopol sp zoo applied with OHIM for the registration of two figurative marks which incorporated the numbers 100 and 300 respectively, printed in bubble typography, with a yellow strip above the number and a red ribbon below. Each application covered goods and services in Classes 16, 28 and 41 of the Nice Classification.

The OHIM examiner refused to register either figurative mark for Classes 16 and 28 on the basis that:
  • the marks were descriptive with regard to these two classes; and
  • the colours and graphics used would not affect this conclusion.
On appeal, Technopol refused to disclaim an exclusive right to the non-distinctive elements '100' and '300' and its appeal was dismissed.

In 2005 Technopol applied for the registration of the following word marks:
  • 1000, initially for goods and services in Classes 16, 28 and 41, but later limited to Class 16;
  • 150, 250 and 350 for goods in Class 16; and
  • 222, 333 and 555 for goods in Class 16.
OHIM rejected each application. The applications were also rejected by the Board of Appeal of OHIM on the following grounds:
  • The marks might be used to indicate the content of the goods (ie, brochures, magazines and periodicals);
  • Article 12 of the Community Trademark Regulation (40/94), which relates to limitations to the scope of a Community trademark (CTM), could not be used by Technopol to relax the conditions for registration of a CTM;
  • References made by Technopol to other registered trademarks were irrelevant because these marks were not similar to Technopol's marks;
  • The marks were not distinctive because consumers would not be able to identify the trade origin of the goods. With regard to the 150, 250, 350 and 1000 marks, the use of round numbers had the effect of promoting the publication’s success. With regard to the 1000 mark only, Technopol had failed to prove that the mark had become distinctive through use.
Technopol filed appeals against all of OHIM's decisions. In its consideration of each application, the CFI made the preliminary observation that numbers may be registered as trademarks if they are distinctive as regards the goods and services covered in the application, and not merely descriptive of these.

In respect of the two figurative marks, the CFI considered Article 38(2) of the regulation, which was raised by OHIM in its request to Technopol to disclaim an exclusive right to the numbers contained within the marks. This provision gives OHIM the right to make registration conditional if a mark contains an element which is not distinctive, and inclusion of that element could give rise to doubts as to the scope of protection afforded. The CFI reiterated that failure to agree to OHIM’s conditions could result in the refusal of a CTM application.

The CFI took a two-part approach in considering whether OHIM was entitled to find that:
  • the elements '100' and '300' were not distinctive; and
  • their inclusion in the marks would give rise to doubts as to the scope of protection. 
In terms of the presence of non-distinctive elements, the CFI felt that 100 and 300 would designate the nature of the goods and services covered in each application. It referred to its reasoning in the decision on the 1000 word mark (see below) in support of this conclusion.

In respect of the scope of protection, the CFI felt that the figurative elements (eg, the colours, typography and ribbon) were too ordinary to affect consumers. Moreover, the numerals were more likely to be dominant, thereby attracting the consumers' attention. It concluded that if there were no conditions to the registration, the impression would be that exclusive rights extended to the numbers 100 and 300, preventing others from using these. Therefore, the CFI agreed with OHIM’s dismissal of the appeal.

The CFI then turned to the word marks. The CFI reiterated the wording of Article 7(1)(c) of the regulation and supporting case law, noting that it was well established that a sign would be considered descriptive if there was a sufficiently direct and specific link between the mark and the relevant goods and services.

In respect of the 1000 mark, the goods covered were brochures and periodicals, including those containing crosswords and puzzles, and newspapers. In respect of the other marks, the goods were periodicals, books and games periodicals. Since the goods were intended for readers, whatever their age, sex or academic level, and since the numbers were recognizable in every EU language, the CFI felt that the relevant public would be any average reasonably well-informed, reasonably observant and circumspect consumer in the whole of the European Union.

In considering whether the relevant public would perceive a sufficiently direct link between the numbers and the goods and services at issue, the CFI noted that the numbers alluded to a quantity such as the number of pages or works, amount of data or number of puzzles in a collection or, in respect of the 1000 mark, the ranking of items referred to. Such numbers are often used on the cover of periodicals. The association would be immediate for the relevant public and taken into consideration by the average consumer when making a purchase. This conclusion was also supported by the CFI in relation to Technopol’s figurative marks (see above).

For round numbers such as the 1000 mark, there was an additional risk that the number would be seen to be some sort of ranking of the publication/collection, which strengthened the descriptive nature of the mark. In this regard, the CFI repeated the example given by OHIM of the German "1,000 Questions and Answers" publication. In addition, the fact that different links existed between the marks and certain characteristics of the goods was irrelevant, as only one potentially descriptive meaning is required for a mark to fall within an absolute ground for refusal.

As a result of the above reasoning, and the fact that there were no other elements which would make the marks distinctive, the CFI held that all of the marks were descriptive under Article 7(1)(c) of the regulation. Technopol’s other arguments were rejected on the same grounds as those set forth by OHIM on appeal. As such, all of the appeals were dismissed.

These related cases called for the CFI to clarify the subjective notion of descriptiveness in relation to a certain class of goods and services. The CFI’s decisions follow the general approach taken by the court in relation to numerical marks. As illustrated by the present decisions, there is always a risk that an application will be refused if it comprises a number and the risk is even greater if that number is a round figure, such figures often being used for model or product numbers for goods, as well as for advertising their ranking.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London

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