Spelling variant will not be perceived as unusual in internet context

In Unister GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-244/12, May 14 2013), the General Court has dismissed an appeal against a decision of the First Board of Appeal of OHIM rejecting a trademark application for the word mark FLUEGE.DE ('flights.de') under Article 7(1)(b) and (c) the Community Trademark Regulation (207/2009) for "advertising, business management, business administration, office functions" in Class 35, "transport, packaging and storage of goods, travel arrangement" in Class 39 and "services for providing foods and drink, accommodation services" in Class 43 of the Nice Classification.

With regard to Article 7(1)(c), the General Court agreed with the Board of Appeal that the services at issue are intended both for the average consumers and for professionals, and that the German-speaking public should be considered when examining the descriptive nature of the trademark applied for. The court held that, with regard to domain names, it is common practice to substitute special characters, such as the letters 'ä', 'ü', 'ö' and 'ß', with the groups of letters 'ae', 'ue', 'oe' and 'ss', for technical reasons.

Therefore, the General Court rejected the applicant’s argument that the mark applied for would be perceived as unusual, despite the fact that it has been possible to register domain names with special characters, such as the letter 'ü', since 2004. Moreover, with regard to the top-level domain '.de', the relevant public would perceive the trademark applied for as a reference to an internet address, and would thus pay less attention to the spelling of 'ue'. The court stated that a domain name will refer, at most, to an internet address, and not to the commercial origin of goods or services of a specific producer or supplier.

The General Court thus concluded that the Board of Appeal was right to hold that the trademark applied for would be perceived spontaneously as a domain name referring to the address of an internet page in the aviation and air-travel field - especially in light of the fact that, while the services at issue do not expressively refer to air transport and flights, they may nevertheless be offered in relation therewith.

The General Court also confirmed the finding of the Board of Appeal that the mere fact of joining two descriptive terms devoid of any distinctive character did not confer distinctive character to the mark FLUEGE.DE as a whole.

Finally, the General Court rejected the applicant’s plea that its mark had acquired distinctive character through use under Article 7(3) of the regulation. The General Court pointed out that this plea had been raised for the first time before the court and, therefore, was not the subject to the contested decision of the Board of Appeal. The General Court recalled that it can only review the legality of the Board of Appeal’s decisions. 

Stephan N Schneller, Maiwald Patentanwalts GmbH, Munich