One descriptive meaning sufficient to refuse registration

European Union
In Baid SARL v Office for Harmonization in the Internal Market (OHIM) (Case T-31/09, March 10 2010), the General Court has upheld a decision of the Board of Appeal of OHIM rejecting an application for the registration of the trademark LE GOMMAGE DES FACADES.

In July 2007 Baid SARL applied to register LE GOMMAGE DES FACADES as a Community trademark (CTM) for products and services relating to the cleaning of buildings. The mark roughly means, in English, 'cleaning of buildings' (by blasting them with dust which does not damage the masonry). The application was rejected by the OHIM examiner under Article 7(1)(c) of the Community Trademark Regulation (40/94) on grounds of descriptiveness. Baid appealed in June 2008. 

In October 2008 the First Board of Appeal of OHIM rejected the appeal. It held that the public would read the word 'facades' as if it were the French word 'façades' and thus disregarded the spelling mistake. It further held that the relevant public consisted of professionals offering building cleaning services across the European Union. It added that the mark would be understood by French-speaking consumers, and that the logical connection between the mark and the type of goods and services was clear because the idea of cleaning the front of a building contained nothing unexpected or distinctive. Moreover, the board held that there was no difference between the syntactically correct expression 'le gommage des façades' and current language. Further, the internet searches conducted by the examiner, which Baid had argued did not show descriptiveness, were not significant. According to the board, it was sufficient that the phrase had a meaning that the relevant public could associate descriptively with the goods and services at issue for it to be caught by Article 7(1)(c). Unsurprisingly, it added that the French registration of the mark for the same goods and services was insufficient to overturn its decision to uphold the refusal of the application. 

Baid appealed to the General Court on three grounds, each of which were contested by OHIM. First, it argued that the board had incorrectly stated that the documents which the examiner found on the Internet were not significant, and that the internet links were not a sufficient justification under Article 73 of the regulation. Second, it denied the existence of a direct and concrete link between the mark and the goods and services, stating that the word 'gommage' did not describe the procedure in question, as it did not use an eraser ('gomme'). Third, it argued that the French registration of the mark (dating from 1985) and several national decisions confirmed that the mark had acquired distinctive character through use within the meaning of Article 7(3).

The court rejected the first argument because:
  • the internet searches had been disregarded;
  • it was sufficient that the phrase had a meaning which the relevant public could associate descriptively with the goods and services; and
  • examples of use on the market were not necessary.
The court rejected the second argument because there was a sufficiently direct and concrete link between the mark and the goods and services for the relevant public, endorsing the board’s view that the term 'gommer' was well known to the French-speaking public (meaning 'to erase' or 'to rub the skin in order to clean it deeply'). According to the court, it was sufficient that one meaning of the word (ie, 'to erase') was relevant to the products and services in question for it to be descriptive.

In relation to the French registration and the national decisions relating to acquired distinctiveness, the court unsurprisingly held that this evidence was not admissible. Baid had not submitted this evidence and related arguments before OHIM and, therefore, was not entitled to raise it subsequently. The court thus rejected the appeal and awarded costs against Baid.

This decision was probably to be expected. Internet searches appear to confirm that the phrase is used in a descriptive sense. If Baid had submitted during examination the evidence which it claimed showed acquired distinctiveness, it might have had more success. Interestingly, in October 2009 Baid filed a CTM application for a mark consisting of the words 'gommage façade' in colour and in a stylized font, which has been accepted and published, apparently without evidence of acquired distinctiveness.

Chris McLeod, Hammonds LLP, London

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