TWIST&POUR application goes down the drain

In The Sherwin-Williams Company v Office for Harmonization in the Internal Market (OHIM) (Case T-190/05), the European Court of First Instance (CFI) has upheld an earlier decision and has refused an application to register TWIST&POUR as a Community trademark for "[h]andheld plastic containers sold as an integral part of a liquid paint containing, storage and pouring device".

US paint producer The Sherwin-Williams Company applied to OHIM to register the TWIST&POUR mark. Both the OHIM examiner and the OHIM Board of Appeal refused registration on the grounds that the mark did not comply with Article 7(1)(b) of the Community Trademark Regulation. OHIM regarded TWIST&POUR as being devoid of distinctive character since it merely gave a description of the goods in question. OHIM reasoned that the mark consisted of two English verbs which were restricted to informing consumers of the characteristics of the goods concerned, and that the message conveyed by the mark was simple, clear and direct. In addition, OHIM stated that no single undertaking can be given the right to monopolize the use of ordinary words or adaptations of such words which describe the goods. Lastly, the other marks referred to by the applicant (eg, TWISTED TUBE, TWIST&DRINK, TWISTER TESTER) were not comparable to the mark in issue in this action.

Sherwin-Williams appealed to the CFI and put forward two main arguments. Firstly, it argued that the reasoning of OHIM that the mark lacked distinctive character within the meaning of Article 7(1)(b) because it provided only a description of the relevant goods was incorrect as this criterion was relevant in relation to Article 7(1)(c) (and not Article 7(1)(b)) of the regulation. In response to this argument, the CFI pointed out that even though the grounds for refusal of registration set out in Article 7(1) are independent of each other and all call for a separate examination, there was a clear overlap between the different grounds for refusal. Settled case law states that when a word sign provides a description of the features of goods or services in the meaning of Article 7(1)(c), at the same time it lacks distinctiveness within the meaning of Article 7(1)(b). The argument raised by Sherwin-Williams did not hold and the CFI agreed with OHIM that the fact that the word mark directly described the action of opening a container with a cap which had to be turned before the liquid contents could be poured out, meant that the words described a characteristic of the product concerned, namely its extremely straightforward method of use, and were thus descriptive only.

The second main argument raised by Sherwin-Williams was that the mark TWIST&POUR only described an incidental characteristic of the product concerned. Citing the European Court of Justice's ruling in Koninklijke KPN Nederland (Case C-363/99), the CFI dismissed this argument, stating that a word mark which is descriptive of characteristics of the goods or services concerned is necessarily devoid of distinctive character, and that it is therefore irrelevant whether the characteristics of the goods or services which were used could be described as commercially "essential" or "incidental".

Accordingly, the CFI dismissed the appeal.

Caroline van Eeuwijk, Allen & Overy LLP, Amsterdam