OHIM erred in failing to examine distinctiveness of mark for each product/service

In Unibail Management v Office for Harmonisation in the Internal Market (OHIM) (Case T-687/13), the General Court has partially annulled a decision of the Second Board of Appeal of OHIM.

Unibail Management filed an application for the registration as a Community trademark of a sign consisting of two lines separated by five stars for goods and services in Classes 16, 35, 36, 38, 39 and 41 to 43 of the Nice Classification:

The OHIM examiner refused to register the mark on the ground that it lacked distinctiveness, and this was confirmed by the Board of Appeal.

The board's decision was appealed to the General Court on the ground that the decision violated Article 7(1)(b) of the Community Trademark Regulation (207/2009). At issue before the court was thus the assessment of the distinctiveness of the mark.

The court recalled that a mark is distinctive when it enables consumers to identify the products as originating from a particular source and to distinguish them from those of other entities. The court added that the distinctiveness of a sign should be assessed in concreto at the time of filing and that such assessment must be carried out on a product per product basis - or, at least, for a category or group of products when the motive for the refusal is identical.

A global assessment can be made only when it concerns a group of products or services which are interlinked in a sufficiently direct and objective way that they form a category or group of goods or services that is sufficiently homogeneous to be examined together. The fact that the goods or services belong to the same class of the Nice Classification is not sufficient.

In addition, the court noted that the distinctive character of a mark must be appreciated in relation to both the products and services at issue and the perception of the relevant public.

The court further noted that the relevant public consisted of the average consumers, who are reasonably well informed and reasonably observant and circumspect as far as the common products were concerned, and of consumers having a high degree of attention as far as the specialised products were concerned. Moreover, the relevant public consisted of consumers in the whole of the European Union.

The application at issue covered over 130 products and services in seven classes. Based on the description of the products, the differences between them were such that they could not be considered to form a homogeneous category that would allow the Board of Appeal to make a global assessment.

Nevertheless, the board had made a global assessment with regard to the products and services in Classes 16, 35, 36, 38, 41 and 42, without distinguishing each product or service, or even each category of products and services. A specific assessment was made only for hostel and catering in Class 43, and this appreciation was not disputed by Unibail.

Therefore, the board had erred in its application of Article 7(1)(b) by failing to examine the distinctiveness of the mark for each of the products and services.

This conclusion was not called into question by OHIM's argument that the lack of distinctive character would be objectively perceived in the same way for all the products and services at issue.

The board's decision was thus annulled insofar as it had refused to register the mark in Classes 16, 35, 36, 38, 41 and 42.

A similar case involving Unibail (Case T-686/13) was decided on the same day. The only difference was that, in Case T-686/13, the mark applied for consisted of four stars between two lines, instead of five stars.

Clearly, these two cases will increase the amount of work of the OHIM examiners and the boards of appeal when they decide to refuse a registration for lack of distinctiveness.

Richard Milchior, Granrut Avocats, Paris