In Rautaruukki Oyj v Office for Harmonization in the Internal Market (OHIM) (Case T-269/06, November 19 2008), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had held that the applicant, a Finnish company, had failed to prove that the mark RAUTARUUKKI had become distinctive in relation to goods in Class 6 of the Nice Classification.
Rautaruukki Oyj applied to register the mark RAUTARUUKKI as a Community trademark for the following Class 6 goods:
“common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; metal plates, sheets and coils; metal tubes and profiles; non-coated or coated.”
The word ‘rautaruukki’ means ‘iron works’ in Finnish. The OHIM examiner and the Board of Appeal both considered that the word referred directly to the nature and characteristics of the goods in question. Consequently, the word would be immediately and unequivocally understood by the relevant public, without any effort or analysis, as a clear statement concerning the key feature of the goods covered by the application - namely, that they were metal products or had been manufactured in an iron works. There was insufficient evidence that the mark had acquired distinctiveness through use. Rautaruukki appealed to the CFI.
According to the CFI, distinctive character acquired through use had to be demonstrated in the part of the European Union where the word was devoid of any such character. In assessing whether a mark has become distinctive through use in a particular case, account must be taken of the following factors, among others:
- the market share held by the mark;
- how intensive, geographically widespread and longstanding use of the mark has been;
- the significance of the investments to promote the mark;
- the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking; and
- statements from chambers of commerce and industry, or other trade and professional associations.
If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identified the goods as originating from a particular undertaking because of the trademark, it had to be concluded that the requirement for registering the mark had been satisfied. However, the CFI held that this was not the case here. The CFI concluded that the Board of Appeal had correctly found that:
“while [Rautaruukki's] evidence was appropriate to establish the use of the mark applied for in Finland and its registration in the Trade and Companies Registers, it did not, on the other hand, establish distinctiveness in consequence of use within the meaning of Article 7(3) of the [Community Trademark Regulation (40/94)] and did not permit the inference that the relevant public in Finland associates the sign RAUTARUUKKI uniquely with [Rautaruukki's] goods falling within Class 6.”
Rautaruukki's case was not helped by the fact that the following documents were not submitted in the proceedings before OHIM, and were therefore inadmissible before the CFI:
- supportive affidavits from the Finnish Central Chamber of Commerce and from every Finnish local chamber of commerce but one;
- supportive affidavits from 92 companies; and
- the decision of the Finnish Patents Office of August 15 2006 approving the registration of the mark RAUTARUUKKI for the goods in question.
The CFI thus dismissed the appeal.
Jeremy Phillips, IP consultant to Olswang, London