OHIM rebuked for not examining distinctiveness of mark in cancellation action

In Bundesverband Deutsche Tafel eV v Office for Harmonisation in the Internal Market (OHIM) (Case T-710/13, September 18 2015), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had declared that the trademark TAFEL for services in Classes 39 and 45 of the Nice Classification was invalid.

Following an application for registration filed by Bundesverband Deutsche Tafel eV, OHIM granted protection for the Community trademark TAFEL for services in Classes 39 and 45. Tiertafel Deutschland eV filed an application for a declaration of invalidity of the mark, which was dismissed by the Cancellation Division of OHIM.   

During the appeal proceedings, the Board of Appeal argued that the German word 'Tafel' means 'table for festive meals' and was of the opinion that this meaning was clearly descriptive for the registered services in Classes 39 and 45, namely "gathering, collection, transportation and distribution of essential goods, including foodstuffs, for others, in particular those in need, and personal and social services rendered by others to meet individual needs". OHIM mentioned in passing that the term 'Tafel' could also be understood by the general public in the sense that the services were "offered" as a "food bank" - a definition which may be found in the online edition of the Duden universal dictionary.

The Sixth Chamber of the General Court annulled the Board of Appeal's decision based on the following findings:

• The Board of Appeal relied only on the meaning of 'Tafel' as a 'table for festive meals'. However, this meaning was not clearly descriptive of the registered services in Classes 39 and 45. There was no clear and concrete connection between these services and a table.
• Although the Board of Appeal mentioned that the term 'Tafel' could be understood as a 'food bank' and in connection with charitable donations, it did not base its decision on this meaning but, rather, on the meaning of 'table'.
• The Board of Appeal erred in stating that, because the indication was descriptive, it was automatically devoid of any distinctive character. The Board of Appeal should have examined the absence of distinctive character separately according to the general criteria.

This decision might come as a surprise for German-speaking consumers, who not only understand 'Tafel' as a 'table for festive meals', but also recognise its meaning in relation to social and charity projects providing food to those in need. The outcome might therefore have been different if OHIM had not mentioned this meaning only in passing, but had taken it as the relevant meaning. The office and the courts must be mindful not to focus too much on one meaning. Even if the questions of whether a trademark is descriptive and/or whether it is devoid of any distinctive character are often confused, both set of criteria have to be examined carefully and separately.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich