SURFCARD descriptive of internet navigation and online payment

In Caisse Fédérale du Crédit Mutuel Centre-Est Europe v Office for Harmonization in the Internal Market (OHIM) (Case T-325/07, November 25 2008), the Court of First Instance (CFI) has partly reversed a decision of the First Board of Appeal of OHIM in which the latter had held that the mark SURFCARD was descriptive in relation to some of the goods and services covered by the application.

In May 2004 Caisse Fédérale du Crédit Mutuel Centre-Est Europe (CFCMCEE) applied for the registration of the trademark SURFCARD for goods and services in Classes 9, 36 and 38 of the Nice Classification. In July 2006 the OHIM examiner took the view that the mark was descriptive of some of the goods and services concerned and refused registration for:

“integrated circuit cards, encoded magnetic cards, integrated circuit or magnetic identity, payment (credit or debit) cards, magnetic and optical data media” in Class 9;
“credit card and debit card services” in Class 36; and
various telecommunication, information transmission and access to computer networks services related to the Internet and other computer networks in Class 38.

In June 2007 the Board of Appeal upheld the examiner’s decision. It found that the mark would be perceived by consumers as designating an integrated circuit card that may be used to surf the Internet and make online transactions. As there was a direct and concrete link between the mark and the relevant goods and services, the board concluded that the mark was descriptive.

CFCMCEE raised a number of arguments in its appeal to the CFI. First, it challenged the board's findings with regard to the “relevant consumers”. Second, it argued that:

the mark as a whole and each of its two verbal components separately were not descriptive;
the word 'surfcard' had no specific meaning and was not used in the English language;
the consumer would not automatically and immediately associate the mark with the field of information technology or the relevant goods and services; and
OHIM had previously registered marks including the words 'surf' and 'card'.

The CFI began with a reminder that:

descriptive marks are to be refused in the public interest, as anyone should be free to use “signs or indications that may serve to designate characteristics of the goods or services for which registration is sought”; and
a descriptive mark is deemed, under Article 7(1)(c) of the Community Trademark Regulation (40/94), to be incapable of fulfilling a mark’s essential function - that is, to identify the commercial origin of the relevant goods or services.

A mark will be descriptive where:

there is a sufficiently direct and concrete link between the mark and the relevant goods and/or services; and
the mark will be understood, immediately and without any further intellectual effort being required, as descriptive by the relevant consumer.

The CFI also clarified that it was not necessary for the mark to have a specific meaning or to be used in a particular language in order for it to be descriptive, as Article 7(1)(c) requires only that it may serve, in trade, to designate the kind and quality (among other things) of the relevant goods or services.

With regard to the relevant consumers, CFCMCEE argued that, among non-English speakers, only IT professionals would associate the mark with navigation and transactions over the Internet. The Board of Appeal had based part of its reasoning on an analysis of the use of 'surf' and 'card' in the French language in relation to the Internet and computers. CFCMCEE challenged the board’s finding that the IT meaning of these terms would be clear to the average French consumer who was not an IT professional. The CFI stated that consumers with a basic grasp of English represent a large proportion of European consumers and that the relevant goods and services, as well as the Internet and computers, were now part of everyday life for most European consumers. The CFI interpreted the board's analysis of the French language as a mere example of the common use of the verbal components of the mark in a language other than English. The CFI also held that an error by the board in relation to French consumers would have been irrelevant, as the ground for absolute refusal applies if its conditions are met in any part of the European Union.

CFCMCEE also tried to split the mark into its two verbal components to show that it was not descriptive of the relevant goods and services. The CFI clearly stated that the correct approach was to assess the descriptive character of the mark as a whole: when a mark is descriptive, it is irrelevant that one of its components may not be descriptive in relation to the specific goods or products. CFCMCEE argued that consumers would associate 'surf' with a nautical context and that the board had failed to show that consumers would associate 'card' with the Internet. The CFI rejected both arguments on the grounds that the relevant consumers would automatically associate SURFCARD with online navigation or transactions and the internet.

CFCMCEE also argued that the board had adopted a detailed and complex reasoning to create a link between the mark and the field of information technology, thereby showing that a consumer would not immediately associate the mark with the relevant goods and services. The CFI rejected this argument and agreed with the board’s conclusion, reflecting that what may appear 'intuitive' can sometimes require a detailed explanation in the context of a legal decision.

However, the CFI criticized the board’s assessment of the descriptive character of the mark for being “relatively abstract and general”, as it should have specifically addressed at least each relevant class and group of goods and services.

With regard to “integrated circuit cards, encoded magnetic cards, integrated circuit or magnetic identity, payment (credit or debit) cards” in Class 9, CFCMCEE pointed out that the board had wrongly classified magnetic cards as smartcards. OHIM acknowledged this mistake. However, the CFI found that it did not affect the validity of the underlying reasoning and agreed with the board’s assessment that the mark was descriptive of these goods.

With regard to “magnetic and optical data media” in Class 9, the board had referred exclusively to CFCMCEE's goods and services when conducting its descriptiveness assessment of these products. The CFI agreed with CFCMCEE that:

the board should instead have based its decisions on such goods generally, rather than those of CFCMCEE; and
the board had failed to show that such goods constituted cards or that their functions were such that the mark would be descriptive of the relevant goods.

The CFI concluded that “a sufficiently direct and concrete link” between the mark and the relevant goods was not present. Therefore, the mark was not descriptive in this respect.

With regard to “credit and debit card services” in Class 36, the CFI found that the mark was not descriptive of these services. It held that the board’s finding that such services were “linked to the marketing of magnetic cards of which the mark was descriptive”:

was not sufficiently supported by evidence;
did not clarify the nature or purpose of such services; and
failed to acknowledge that they cover a wide and complex range of services (eg, between issuing banks, clearing networks and the ultimate makers and recipients of payments).

With regard to the various telecommunication, information transmission and access to computer networks services related to the Internet and other computer networks in Class 38, the CFI agreed with the board that the mark was descriptive of those goods and services which required the use of a card, as there was a sufficiently direct and concrete link between the mark and such goods and services.

The key points of this judgment are as follows:

Empirical evidence as to the descriptive character or otherwise of a mark is required in order to claim or refuse registration. Mere assertions will be insufficient - whether they are in support of an application or made by OHIM to justify its refusal to register.
The descriptive character of a mark must be assessed specifically in relation to each group of products and services covered by any given class. A blanket grant or refusal of registration in relation to a whole class may be inappropriate where it covers a wide range of products and services.

Marine Baudriller, Hammonds LLP, London

SURFCARD descriptive of internet navigation and online payment

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