THE LEADERSHIP COMPANY held to be descriptive of recruitment services

European Union

In Heidrick & Struggles International Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-43/14, December 12 2014), the General Court has upheld a decision of the Second Board of Appeal of OHIM refusing registration of the mark THE LEADERSHIP COMPANY.

Heidrick & Struggles International Inc filed an application for registration of the Community word mark THE LEADERSHIP COMPANY for, among other things, "executive recruitment services" and "recruitment consultation services" in Class 35 of the Nice Classification. OHIM refused the application for all the services applied for on the ground that the trademark was descriptive of those services and devoid of any distinctive character in their regard.

Heidrick & Struggles then brought the case before the General Court. It claimed that the relationship between the mark applied for and the services concerned was far from direct and specific. This was supported by the claim that the services applied for relate to the act of recruitment, including the process of enlisting, enrolling or obtaining members, and that the consumer does not actually obtain leadership from Heidrick & Struggles.

The General Court first stated that the reason for not allowing registration of descriptive trademarks is to ensure that descriptive trademarks relating to one or more characteristics of the services in respect of which registration is sought may be freely used by all traders offering such services. In this connection, the court further held that a trademark can be refused with reference to descriptiveness only if it is reasonable to believe that it will actually be immediately recognised by the relevant class of persons as a description of one of those characteristics.

The General Court then stated that the relevant public to whom the services were directed was composed of professional English-speaking clients, whose level of attentiveness must be expected to be high.

The services at issue - "executive recruitment services" and "recruitment consultation services" - were found to be clearly associated with an undertaking's recruitment policy at the highest level of its hierarchy. The services were aimed at giving active advice to companies regarding their management needs, including by supplying executive leaders by instilling them or honing a leadership mentality. This corresponded to the recruitment and coaching services that Heidrick & Struggles provides.

With regard to the trademark THE LEADERSHIP COMPANY, the court held that the first element of the mark, 'the', was merely a definite article and that, having regard to the services at issue, the word 'company' referred to a legal person, specifically to the undertaking that provided those services. The General Court further held that the word 'leadership' means the action or influence necessary for the direction or organisation on effort in an undertaking. The last word was perceived to establish a relevant connection with the services at issue, given that executive recruitment companies will look for the most talented and skilled professionals in order to meet the needs of their clients. They will be most interested in the best candidates and in those who show leadership skills, even though they also sometimes take on employees with weaker profiles.

On basis of the above, the General Court found that the trademark THE LEADERSHIP COMPANY would be perceived by the relevant public - professional consumers with a high degree of attentiveness - as referring to an undertaking which provides recruitment and coaching services in order to meet its clients' need in the sphere of recruitment, including recruiting executives with leadership skills. This constituted a sufficiently direct and specific relationship between the services and the mark applied for and, consequently, the mark was held to be descriptive of the characteristics of the services concerned. 

The appeal was thus dismissed in its entirety.

Mette-Marie Henrichsen, Plesner, Copenhagen

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