TEK cancelled for being descriptive of shelves

In Tegometall International AG v Office for Harmonization in the Internal Market (OHIM), the Court of First Instance (CFI) has upheld a decision by the Second Board of Appeal of OHIM to remove the mark TEK from the register.

In 1999 Tegometall International AG applied for the registration of the word mark TEK as a Community trademark for goods in Classes 6 ("shelves and parts of shelves, in particular hanging baskets for shelves, all the aforesaid goods of metal") and 20 ("shelves and parts of shelves, in particular hanging baskets for the shelves") of the Nice Classification.

OHIM registered the mark in 2001. In 2003 Wuppermann AG applied for the mark to be declared invalid on the grounds that the registration was open to objection based on absolute grounds for refusal (in particular, the mark was descriptive and devoid of distinctive character). Tegometall subsequently filed an application to restrict the list of goods in Class 20 to read as follows: "shelves and parts of shelves, in particular hanging baskets for shelves, all the aforesaid goods not of wood". The Cancellation Division of OHIM accepted the restriction to Class 20 and rejected Wuppermann's application for a declaration of invalidity.

In November 2004 Wuppermann appealed the decision of the Cancellation Division (Case R1063/2004-2). The appeal was allowed and the Second Board of Appeal of OHIM ordered the removal of the mark from the register, stating that the mark was descriptive and devoid of distinctive character. The board took the view that since the word 'tek' means teakwood in Italian and French, and shelves and parts of shelves can be made of teakwood, it could not be ruled out that the goods covered by the registration might be made of imitation teakwood. The board also took the view that since the word 'tek' was not capable of distinguishing the origin of the goods, it was devoid of distinctive character.

Following the board's decision, in December 2005 Tegometall applied to OHIM to request a further restriction to the list of goods to read as follows:

"Class 6: Shelves and parts of shelves, in particular hanging baskets for shelves, all the aforesaid goods of metal and not of imitation wood.

Class 20: Shelves and parts of shelves, in particular hanging baskets for shelves, all the aforesaid goods not of wood or imitation wood."

Moreover, Tegometall appealed to the CFI, alleging that:

• its rights had been infringed as it had been unable to express its views on the issue relating to imitation teakwood throughout the administrative proceedings on invalidity;
  
  
• it had been deprived of the possibility of expressing its views on the board's reasoning and, in particular, was not given the chance to restrict its goods further; and
  
  
• the mark was not descriptive for the goods at issue, as the word 'tek' would not be understood by the average consumer as meaning 'teakwood'.

The CFI held that Tegometall's rights had not been infringed, and that it had been in a position to express its views on all matters of fact and law on which the board had based its findings. According to the CFI, there had been an exchange of views on whether the mark was descriptive from an early stage in the proceedings.

Moreover, the CFI observed that it could take into consideration only the list of goods set out in Tegometall's original application, as restricted in 2004 prior to the decision of the Cancellation Division. To allow an alteration to the list of goods after the contested decision would amount to changing the subject-matter of the proceedings before the court, which is prohibited according to the Rules of Procedure of the CFI.

The CFI noted that the descriptiveness of a mark may be assessed only in relation to, first, the goods or services concerned and, second, the perception of the target market. An important factor in this case was the original list of goods as filed with OHIM. Given the nature of the goods, the CFI found that they were intended for general consumption. Moreover, the CFI stated that the perception of the word 'tek' should be assessed in relation to French and Italian-speaking consumers.

The CFI concluded that whether the word 'tek' was used in the sense of 'teakwood' was irrelevant. A term may be refused registration on the basis of descriptiveness if at least one of its possible meanings designates a characteristic of the goods or services at issue. Even if Tegometall did not intend to market the goods with the aim of imitating teakwood, the link between the meaning of the term 'tek' and the goods at issue was sufficiently close to fall within the grounds for refusal under Article 7(1)(c) of the Community Trademark Regulation (40/94).

Therefore, the CFI dismissed the action and ordered the cancellation of the mark TEK.

Gavan Ferguson and Sarah Jane Nally, F R Kelly & Co, Dublin