OPTIMUM fails to achieve optimum result

European Union

In Pioneer Hi-Bred International Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-424/07, January 20 2009), the Court of First Instance (CFI) has dismissed an appeal against a decision of the Second Board of Appeal of OHIM in which the latter had upheld a decision to refuse registration of the mark OPTIMUM.

On February 10 2006 Pioneer Hi-Bred International Inc applied to register the mark OPTIMUM as a Community trademark for “biological material, namely plant tissue genes and gene sequences for agricultural purposes” in Class 1 of the Nice Classification. On January 25 2007 the OHIM examiner took the view that the mark was devoid of distinctive character and consisted exclusively of signs or indications which may serve, in trade, to designate the main characteristics of the goods, or of signs or indications which have become customary.  
On September 11 2007 the Second Board of Appeal of OHIM upheld the examiner’s decision. It found that the mark OPTIMUM was devoid of the minimal distinctive character required for registration. As a result, the board considered that it was unnecessary to examine further whether the grounds for refusal set out in Article 7(1)(c) of the Community Trademark Regulation (40/94) also precluded registration of the mark.
Pioneer raised numerous arguments in its appeal to the CFI.
First, the CFI rejected Pioneer’s claim that the board infringed Articles 7(1)(b) and (2) of the regulation by failing to take proper account of the fact that the goods covered by the mark addressed a specialized public. The CFI stated that:
  • the board had correctly defined the relevant public as a "specialized public consisting of scientists specialized in the field of genetic engineering"; and
  • the distinctive character of the mark should thus be assessed by taking into account the assumed perception of a specialized consumer.
The CFI agreed with the board that 'optimum' is a banal and widespread laudatory term, and held that the board was correct in inferring the lack of distinctiveness of the mark from this finding. The CFI also pointed out that the word 'optimum' was used in its normal grammatical manner, which compounded the lack of distinctiveness. It rejected Pioneer's argument that, by finding that 'optimum' was a laudatory term in the specific field of business, the board had based its decision on assumptions and speculation.
Contrary to further arguments by Pioneer, the CFI held that due to the generic meaning which could exalt any aspect of the product, the mark OPTIMUM did not enable the consumer to imagine what type of goods it referred to. Because the word 'optimum' is common in everyday language, it is not appropriate for identifying the commercial origin of the goods which it designates and for performing the essential function of a trademark. The fact that the goods were intended for a specialized public did not alter this finding.
The CFI concluded that the board had established to the requisite legal standard that OPTIMUM had no distinctive character in relation to the goods covered by the application. It was not for the board to establish whether the word 'optimum' was used or might be used as an equivalent to the goods in question.
The CFI thus dismissed the appeal.
Nicole Gernon, F R Kelly & Co, Dublin

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