OXY not descriptive of skincare products

Estonia

The Board of Appeal has annulled a decision of the Estonian Patent Office in which the latter had refused to register the trademark OXY (Decision 1137-o, March 13 2012).

The Mentholatum Company Ltd applied to register the word mark OXY (International Registration 0893267) for “non-medicated skincare and cleansing preparations; skin creams, skin lotions” in Class 3, and “medicated skincare and cleansing preparations for human use” in Class 5 of the Nice Classification.

The Patent Office refused to register the mark, stating that the term ‘oxy’ was widely used in real market situation to designate skincare products, and could be found in the composition of numerous trademarks. The office also held that the word ‘oxy’ was descriptive in relation to the goods applied for, as oxygen is an essential component of this type of products. According to the office, it was obvious that ‘oxy’ designated the oxygen content of the products or the effect of oxygen on the skin.

The applicant filed an appeal against this decision. The applicant drew attention to:

  • its earlier national registrations for goods in Class 5, such as OXY, OXY 5 and OXY 10, which the Patent Office had granted in 1997; and
  • its Community trademark OXY for goods in Classes 3 and 5.

The Patent Office presented extracts from numerous dictionaries (including medicinal ones) and websites in which the word 'oxy' was used, such as “free oxy radicals”, “oxy skin sprays” and “oxy skincare products”. Nevertheless, the applicant stated that this did not objectively prove that OXY designated the characteristics of the goods at issue or that it had become customary in the current language.

The applicant also pointed out that, based on the statements and evidence filed by the Patent Office, it was not possible to conclude that the average consumer, who is reasonably well informed and reasonably observant and circumspect, would, immediately and without further thought, make a connection between the mark and the goods in Classes 3 and 5. As oxygen is a component of many different products, the applicant argued that it was not certain that the average consumer would perceive the mark OXY as indicating the characteristics of the goods. The applicant also argued that the Patent Office had not filed any evidence that could prove that the word 'oxy' was used in the Estonian language and in the course of trade.

The Board of Appeal upheld the appeal and reversed the office’s decision.

Anneli Kapp, Käosaar & Co, Tartu

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