OHIM held to have exceeded limits of its powers by re-opening examination

European Union

In Lumene Oy v Office for Harmonisation in the Internal Market (OHIM) (Case T-484/13, November 18 2014), the General Court has ruled that OHIM had correctly refused the Community trademark (CTM) application for THE YOUTH EXPERTS for certain goods in Classes 3 and 5 of the Nice Classification. However, the court ruled that the Board of Appeal had exceeded the limits of its powers by re-opening the examination of the absolute grounds of its own motion and concluding that the CTM lacked distinctiveness for all goods in Classes 3 and 5.

Lumene Oy is a Finnish company that produces cosmetics in Finland and sells them all over the world. The company applied for an international registration for the word mark THE YOUTH EXPERTS in Classes 3 and 5, designating the European Union.

The OHIM examiner objected to the registration of the sign in the European Union on the grounds that it lacked distinctiveness in respect of "soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices" in Class 3 and "pharmaceutical and veterinary preparations, dietetic food and substances adapted for medical or veterinary use, food for babies and dietary supplements for humans and animals" in Class 5 (collectively, ‘the contested goods’).

On the other hand, the examiner accepted the application for the other goods in Class 3, namely, "bleaching preparations and other substances for laundry use and cleaning, polishing, scouring and abrasive preparations", and those in Class 5, namely "sanitary preparations for medical purposes, plasters, materials for dressings, material for stopping teeth and dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides" (collectively, ‘the non-contested goods’).

Lumene appealed the decision.

The Second Board of Appeal of OHIM decided the case in a very different manner. It dismissed the appeal, stating that the trademark applied for was a promotional message and was unsuitable as an indication of the commercial origin of all the goods in Classes 3 and 5.

Lumene appealed to the General Court, claiming that the court should annul the board's decision and conclude that the trademark applied for may proceed to registration.

Lumene suggested that the Board of Appeal had erred in finding that the trademark THE YOUTH EXPERTS was devoid of any distinctive character on the basis that the mark was by nature a laudatory promotional message. According to Lumene, the mark was using creative, distinctive and original terminology that clearly enabled the relevant public to identify the origin of the goods in question. Lumene also argued that a large number of CTMs containing the words 'youth' and 'expert' had already been registered and that the Finnish Patent and Registration Office, as well as the United States Patent and Trademark Office (USPTO), had both registered the trademark in question.

OHIM contested Lumene’s arguments, arguing that the trademark was a banal slogan with a clear laudatory meaning, which would be perceived by the relevant public as purely promotional information promising expertise in a specific field, and not as an indicator of the commercial origin of the goods.

The General Court first ruled that Lumene’s claim that “the General Court should conclude that the CTM applied for may proceed to registration” was inadmissible as, according to settled case law, the court does not issue directions to OHIM.

The General Court then stated that the Second Board of Appeal had exceeded the limits of its powers by re-opening the examination in relation to the absolute grounds (ie, the distinctive character of the CTM applied for).

In relation to the contested goods, the General Court emphasised that, in the present case, the Board of Appeal had concluded that the relevant public would perceive the mark applied for as a promotional message, inviting it to choose the applicant’s products because they have been developed by specialists in the relevant fields, and as an indication of the contested goods’ quality.

According to the court, that finding was in itself sufficient for it to be held that, in relation to the contested goods, registration of THE YOUTH EXPERTS as a CTM was caught by the absolute ground for refusal under Article 7(1)(b) of the Community Trademark Regulation (207/2009). The Board of Appeal's decision could not be called into question merely because the board had not, in the present case, followed the decision-making practice of OHIM, the Finnish Patent and Registration Office or the USPTO.

The General Court thus annulled the Board of Appeal’s decision in relation to the non-contested goods and dismissed the action as to the contested goods.

Jukka Palm, Berggren Oy Ab, Helsinki

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