TÍMAFLAKK mark refused registration

Iceland
  • Reykjavik District Court has upheld an opposition against the registration of TÍMAFLAKK under Article 13 of the Trademarks Act
  • TÍMAFLAKK  which translates into English as the concept of ‘time travel’  was found to be descriptive for an on-demand video service
  • Court overturned the decisions of the patent office and the board of appeal


Background

In Fjarskipti hf v Síminn hf (Case E-836/2016) the Reykjavik District Court upheld an opposition claim filed by the plaintiff against registration of the trademark TÍMAFLAKK based on Article 13 of the Trademarks Act regarding distinctiveness.

The defendant, Síminn hf, was an Icelandic telecommunications company offering communication services for private and corporate clients, including mobile phones, home phones, Internet connections and television. It also ran a TV channel and streaming services.

The plaintiff was also a telecommunications company offering all core telecommunications services to individuals, business institutions and public bodies.

The defendant first used the TÍMAFLAKK mark for its on-demand video and non-linear media services at the end of 2012 and filed an application for registration of the mark at the Icelandic Patent Office on January 29 2013 for a broad range of services in Classes 38, 41 and 42 of the Nice Classification.

Tímaflakk can be translated from Icelandic as ‘timewandering’. However, in daily use it has the same meaning as the English term ‘time travel’.

The patent office initially rejected the registration of TÍMAFLAKK for all services with reference to Article 13. The defendant filed arguments in support of registration and the mark was subsequently registered in December 2013. The defendant then noted that the plaintiff had used TÍMAFLAKK in its on-demand video and non-linear media services and sent a cease and desist letter. In reponse, the plaintiff stated that it would file an opposition against the registration on the basis of lack of distinctiveness and that its use of TÍMAFLAKK would cease if the patent office rejected the opposition. However, the plaintiff changed its marketing use to TÍMAVÉL (time machine) and subsequently filed an opposition.

Decision

The patent office rejected the opposition on February 12 2015 and mentioned that the word ‘tímaflakk’ could not be found in an Icelandic dictionary; while it clearly meant wandering or travelling in time, the patent office was unaware of the origin of the word, claiming that it possibly represented a translation of the English concept of time travel. The patent office further reasoned that journeying between different periods in history is a popular theme in films, television and literature and is a frequent topic within philosophy and physics, although the conclusion is always that time travel is not possible in reality. The opposition was rejected.

In March 2015 the defendant reiteriated its claim against the plaintiff. The plaintiff then appealed to the Icelandic Intellectual Property Office Board of Appeal which upheld the patent office decision. In its reasoning the board of appeal had initially listed the exact services covered by the opposed application.

The board of appeal also argued that marks which are considered descriptive do not fulfil the conditions of Article 13 of the Trademarks Act, nor do marks which are based on common signs or phrases used in business or day-to-day life. The basis for the condition that marks should have distinctive characteristics are that descriptive marks do not identify the goods or services of the owner of the mark from the goods of others and that no one should be granted the sole right to words which everyone in the respective field of business needs to use. When evaluating whether a mark fulfils the conditions for distinctive characteristics, each case must be looked at individually and all the circumstances evaluated (eg, the goods or services for which registration is requested and former use).

The board of appeal then referred to the patent office reasoning that ‘tímaflakk’ could not be found in any Icelandic dictionary and that the word clearly meant wandering or travelling in time. The board of appeal reasoned that TÍMAFLAKK was not descriptive in the context of the list of services covered by the opposed registration, it did not include any general description that others in the same business field would need to use in their marketing and that TÍMAFLAKK did not lack distinctive character. The board referred to the reasoning of the patent office that although it is not possible to travel in time this fact should not affect the evaluation of the conditions in Article 13. It concluded that in light of the main purpose of trademarks, which is to distinguish the goods or services of one party from the goods or services of others, TÍMAFLAKK should not be considered descriptive for the services covered by the opposed registration, nor should it be considered to lack sufficient distinctive character. The plaintiff appealed the case to the district court.

Reykjavik District Court

The court outlined the arguments of the defendant and plaintiff respectively and then initially reasoned in general terms concerning the basis of the decisions, such as the wording of Article 13, and referred to the legal preparatory documents. Further guidelines from the preparatory documents were discussed as part of the legal sources relevant to the case.

The court then argued that even if it is not mentioned in the Trademarks Act, Article 13 of correlated to Items (b) and (c) of Paragraph 1, Article 3 of Directive 89/104/EBE of December 21 1988 on the approximation of the laws of the Member States relating to trademarks, replaced by Directive 2008/95/EBE. The directive stipulates that trademarks should not be accepted for registration which “are devoid of distinctive character” or:

which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services”.

Referring to Article 3, it was stated that marks registered in conflict with the directive should be declared invalid. The court then explained how these legal sources should affect a decision according to the EEA agreement and having regard to how the provisions have been clarified in the case law of the European Free Trade Association (EFTA) Court, the European Court of Justice (ECJ) and the Supreme Court of Iceland.

The court then referred to the interpretation of Council Regulation 40/94 by the ECJ in OHIM v Wrigley (Case C-191/01 P). According to EFTA Court case law there must be sufficient direct and specific connection between the mark and the goods or services in question to connect the mark and the service in the mind of the consumer. In light of the purpose of the EEA agreement, which is to form an homogenous European economic territory based on the common regulations and the same conditions of competition, the aforementioned interpretation must be considered when interpreting the Article 13 provision.

The district court decided on the facts of the case that the conditions of Article 13 were not fulfilled. Even if the plaintiff’s reasoning that TÍMAFLAKK, which connotes the general meaning of time travel, was to be considered, it should not be overlooked that the word is nevertheless “very descriptive for the service to enable consumers to view at will specific programs within 24 hours of broadcast”. In support of this statement it was mentioned that it should also be considered that the phrase “flakka á milli stöðva [wandering between channels]” or “flakka á milli rása [wandering between (television) stations]” has an accepted reference (according to general use in daily language) when a television viewer alternates between television channels. TÍMAFLAKK thus evoked the general consumer’s experience of watching a television programme and therefore presented a sufficiently direct and specific relation between TÍMAFLAKK to the defendant’s service so that the consumer could envisage the service and its characteristics.

The Icelandic word ‘tímaflakk’ can be literally translated into English as ‘timewandering’ and ‘flakka á milli rása/stöðva’ directly translated as ‘wandering between television stations/channels’. However, in English this is referred to as ‘channel surfing’ or ‘channel hopping’, for example.

The court overturned the decision of the patent office and the board of appeal on the ground that the TÍMAFLAKK mark did not fulfil the legal requirement of registration.

Comment

The patent office, board of appeal and the court accepted that ‘tímaflakk’ has a specific meaning or a science fiction concept in which people are able to move backwards into the past or forwards into the future. It is safe to say that this meaning is generally known in Iceland in the same way as ‘time travel’ is in the English language.

According to the court, the decision was based on an evaluation of TÍMAFLAKK as being descriptive in the context of on-demand video (non-linear media) and not in the context of the rather broad list of services covered in Classes 38, 41 and 42.

The case has not been appealed to the Supreme Court.                                                   

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavik

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