PANORAMA mark held to be invalid for aquariums
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In Juwel Aquarium GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-339/07, October 28 2009), the CFI has upheld a decision of the Board of Appeal of OHIM in which the latter had held that the trademark PANORAMA was invalid.
In February 2004 Juwel Aquarium GmbH & Co KG registered the word mark PANORAMA as a Community trademark for goods and services in Classes 11 ("aquarium lamps "), 16 ("indoor aquariums and terrariums") and 20 ("furniture and frames for aquariums and terrariums") of the Nice Classification. Later that year, Christian Potschak applied for a declaration of invalidity on the grounds that the mark had been registered in breach of Article 7(1) of the Community Trademark Regulation (40/94).
In 2006 the Cancellation Division of OHIM refused the application for a declaration of invalidity. In a subsequent appeal to the Board of Appeal of OHIM, the decision was annulled and the application for a declaration of invalidity was upheld.
Juwel appealed to the CFI, raising two grounds in support of its application:
- the board had infringed Article 7(1)(c) of the regulation in finding that the mark was purely descriptive; and
- the board had failed to consider whether the mark consisted exclusively of signs or indications which have become customary in the current language or in trade under Article 7(1)(d).
The board had considered that if the mark was a technical term in relation to aquariums or terrariums, it had a directly descriptive meaning under Article 7(1)(c). Therefore, the term 'panorama' was customary. The CFI pointed out that there was consistent case law showing that each of the absolute grounds under Article 7 was independent, and that only one was required as a basis for refusal.
The CFI noted that the board’s decision was based on Articles 7(1)(b) (lack of distinctive character) and 7(1)(c) (descriptiveness), and noted that Juwel had not challenged the board’s interpretation of Article 7(1)(b). Therefore, there was a possibility that the appeal was not even admissible, as it would not bring any relief to Juwel. However, the CFI noted that under established case law, it is allowed to consider the substance of an appeal - without deciding on its admissibility - in the interests of procedural efficiency.
The CFI then took the usual approach of considering the descriptiveness of the mark in relation to the goods and services in question. The CFI agreed with the board that the relevant public included aquarium and terrarium enthusiasts, as well as customers purchasing an aquarium or terrarium for the first time. It rejected Juwel’s argument that the relevant public also included consumers who were likely to keep fish in the future, holding that those consumers would become part of the relevant public only once they had decided to buy goods bearing the mark.
In light of the above, the CFI decided that the average consumer had an interest in aquariums and terrariums, and was reasonably well informed, reasonably observant and circumspect. However, it was noted that aquarium enthusiasts would pay a greater level of attention to the goods.
With regard to the descriptiveness of the mark, the CFI agreed with the board that the term 'panorama' described an all-round view with a wide and clear field of vision. This was significant in relation to the goods at issue, as a panoramic view would allow large areas of the aquarium or terrarium to be viewed. The mark was also descriptive for "aquarium lamps", as well as "furniture and frames for aquariums and terrariums", as these would contribute significantly to achieving a panoramic field of vision.
The CFI went on to state that the PANORAMA mark, when applied to the goods in question, directly informed the relevant public of an essential characteristic of the goods - namely, a particularly wide view of the contents of the aquarium or terrarium. Contrary to what Juwel claimed, the field of vision offered by an aquarium or terrarium would not be determined only by its internal arrangement, but also by characteristics inherent to its shape. Further, the "furniture and frames" and "aquarium lamps" were adapted for the specific purpose of creating a panoramic view, such that the relevant public would perceive a link between the mark and the characteristics of these goods. The CFI thus concluded that the board had correctly found that the mark was descriptive of the goods.
Juwell also sought to argue that it was the only company to use the word 'panorama' in relation to aquariums. However, the CFI found that there was no evidence that the mark had acquired distinctive character through use.
Having found that the mark was descriptive under Article 7(1)(c), the CFI rejected the appeal in its entirety.
In the past, the CFI has taken a lenient approach to marks that might be considered as descriptive (see, eg, BABY-DRY (Case C-383/99 P)). However, the PANORAMA decision reveals a stricter approach. The consequences of this new approach will be harsh for brand owners that register a trademark and subsequently build up a degree of goodwill in relation to it (as in the present case), but later discover that the registration should not have been allowed in the first place.
Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London
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