OHIM fails to give 'complete' consideration to goods specification

European Union
In Paul Hartmann AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-123/10, November 30 2011), the General Court has upheld an appeal against a decision of the Fourth Board of Appeal of OHIM in which the latter had refused to register the word mark COMPLETE as a Community trademark.

In December 2008 Paul Hartmann AG applied to register COMPLETE for goods in Classes 5 and 10 of the Nice Classification. The application was filed for the following goods:
  • Class 5: "sanitary preparations for medical use; plasters, materials for dressings; disinfectants; napkins, napkin liners, napkin pants and absorbent pads, mainly consisting of paper, cellulose or other fibre materials being disposable articles, fix pants, woven and/or knitted of textile fibres or consisting of cellulose, for fixing absorbent pads, all the aforesaid goods for incontinence purposes".
  • Class 10: "orthopaedic articles; suture materials; draw sheets for sick beds and incontinence sheets (included in class 10)".
In May 2009 the OHIM examiner rejected the application under Article 7(1)(b) of the Community Trademark Regulation (207/2009) on the basis of the mark’s lack of distinctiveness. The applicant appealed. In October 2009 the Board of Appeal informed the applicant that the application was also rejected under Article 7(1)(c) of the regulation on the basis that the mark was descriptive of the goods in the application.

In January 2010 the board rejected the applicant’s appeal on the same grounds. The board’s reasoning was that an English speaker would deduce a number of meanings from the word ‘complete’ and, independent of those, ‘complete’ would convey the concept of ‘completeness’. In the board’s view, the concept of completeness was obvious in respect of goods for the care of incontinence. On that basis, the board held that the mark was descriptive and, by default, devoid of distinctiveness.

The applicant appealed to the General Court, arguing violation of Articles 7(1)(b) and (c).

The court first considered the alleged violation of Article 7(1)(c). It was not challenged that the relevant public was the average English-speaking consumer, but the parties had conflicting positions with regards to the board’s interpretation of the descriptiveness of the mark in relation to the goods.

The applicant submitted that the word ‘complete’ was not directly descriptive of the goods. It argued that the mark was not descriptive at all for dressings, materials for dressings, orthopaedic articles and suture materials, which were not designed to treat incontinence and not directly descriptive of goods that were designed to treat incontinence. The applicant highlighted that the concept of 'completeness' must apply to all of the goods in the application, not only those designed to treat incontinence.

In contrast, OHIM argued that the word ‘complete’ would be understood by the relevant public as giving an indication of the quality and purpose of the goods. In particular, the relevant public would consider that pads and other absorbent protection, such as mattress protectors, would offer complete protection against the effects of incontinence. The other goods in the application were general care products or sanitary preparations for medical use, which would play an important role in offering ‘complete’ care. OHIM also argued that mattresses and cushions for the care of incontinent people were sometimes sold under the term ‘orthopaedic articles’. Accordingly, the relevant public would understand ‘complete’ to mean offering complete, or a range offering complete treatment for incontinence, without the need for additional products.

The court reiterated the general principle that, for a mark to be rejected on absolute grounds, the absolute ground must apply to each of the goods in the application. However, it recognised that the board had a power to rely on a single ground for all of the goods in the application if the ground applied to a category or group of goods, and provided that the decision could still be judicially reviewed to ensure its legality.

The court confirmed that the board’s power could be used only in respect of goods that were part of a “sufficiently homogenous group”. The fact that the goods were in the same class would not necessarily result in a homogenous group, as classes contain a wide variety of goods that are not always closely linked. The court also raised the underlying public interest argument for refusing to register descriptive marks (ie, that descriptive marks should be able to be used without restriction and by anyone) and the argument that descriptive marks are incapable of fulfilling the function of a trademark.

The court also reiterated that ‘complete’ is an English word, with a number of meanings, notably "having all its parts or members; entire; full; perfect in nature or quality, without defect" (Oxford English Dictionary, 2009) or, in German, "vollständig, komplett”. Independent of those definitions, the board had considered that the mark conveyed the concept of completeness. The applicant did not challenge this, but did state that there were other interpretations of ‘complete’. However, the court considered that where one interpretation could give rise to an absolute ground for refusal, other interpretations were irrelevant.

The court then moved on to consider whether ‘complete’ translates into the ‘concept of completeness’ for the relevant public. In considering this, the court referred to point 11 of the board’s decision, which stated that “the substance of the mark is immediately apparent for goods designed to treat incontinence”. With this in mind, the board had distinguished between two sub-categories:
  • goods which prevent the effects of incontinence, such as absorbent pads, napkin pants, absorbent protection, draw sheets; and 
  • goods for the treatment and general prevention of incontinence, such as sanitary preparations for medical use, dressings, material for dressings, disinfectants, orthopaedic articles and suture materials.
On that basis, the board decided that the word ‘complete’ described the fact that the goods offered a range of complete care for incontinence.

The court also referred to point 12 of the board’s decision, where it had indicated that "descriptiveness results from the mark’s relationship with the goods in the application" and that “the English speaker would understand the pathology of incontinence and the problems of incomplete and therefore unsatisfactory care”. The board had concluded that, “as a result, the relevant public would establish a link between the concept of completeness and the treatment of incontinence”. In the board’s view, it did not matter that the word ‘complete’ would be seen as a reference to the impermeability of the products, since the very nature of the word ‘complete’ meant that it was conceptually descriptive of the quality and purpose of the goods.

The court moved on to consider whether the relevant public would think that all of the goods in the application were part of a ‘range of complete care for incontinence’ and, therefore, a homogenous group. Taking each of the goods in turn, the court noted that goods in the first sub-category identified by the board would be immediately identifiable as goods designed for the treatment of incontinence. Indeed, the applicant had stated this in its application. However, in the case of draw sheets for sick people and draw sheets for incontinent people, these goods were not designed for the same purpose, and the former would not be immediately recognisable as being for the treatment of incontinence.

In respect of the other goods identified as being part of the second sub-category (sanitary preparations for medical use, plasters, material for dressings, disinfectants, orthopaedic articles and suture materials), the court’s view was that their relationship with the treatment of incontinence was unproven. The court used the example of orthopaedic articles to illustrate its view – at first glance, such articles were not relevant to the treatment of incontinence and the board’s decision did not suggest otherwise. OHIM’s explanation that orthopaedic articles might include mattresses and cushions for people suffering from incontinence did not convince the court; in its view, the consumer would think of different uses for orthopaedic articles other than the treatment of incontinence. Accordingly, the court held that these could not form part of a homogenous group with the other goods in the application.

Therefore, the first line of the appeal was upheld.

Turning to the alleged violation of Article 7(1)(b), the court referred to point 15 of the board’s decision that, “as the mark is descriptive, it is necessarily devoid of distinctive character”, and criticised the fact that the board had made its decision on distinctiveness by relying on its analysis of descriptiveness. It also criticised the board for failing to consider the public interest in safeguarding the function of a trademark. The second line of appeal was upheld.
 
While the applicant was ultimately successful in its appeal (albeit due to the erroneous reasoning of the board) this case shows the importance of careful drafting of specifications in a trademark application, particularly if there is a risk that the mark may be seen as descriptive for certain goods. 

Ellie Forrest-Charde and Chris McLeod, Squire Sanders (UK) LLP, London

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