UNIQUE mark for telecoms fails to engage the CFI

European Union
In France Télécom v Office for Harmonization in the Internal Market (OHIM) (Case T-396/07, September 23 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had refused to register the mark UNIQUE.
France Télécom - France's main telecommunications company - applied to register the mark UNIQUE for telecommunications goods and services in Classes 9, 35 and 38 of the Nice Classification. The OHIM examiner rejected the application on the grounds that the mark lacked distinctive character and had not acquired distinctiveness through use. France Télécom appealed to the Board of Appeal, which upheld the examiner’s decision, stating that the mark was banal and laudatory.
On appeal to the CFI, France Télécom argued that:

  • the board had erroneously based its decision on the use of the term 'unique' in common parlance and in business; and
  • the number of internet hits for the word 'unique' did not justify the conclusion that this word would be used in the course of trade in relation to the telecommunications sector.
France Télécom added that an everyday term such as 'unique' could function as a trademark as long as it had not become customary. Moreover, it submitted that because the term was not capable of describing or highlighting the qualities of the relevant goods and services, it could not be laudatory. Finally, France Télécom argued that:
  • registration would not prevent others from using the word descriptively; and
  • several UNIQUE marks had been registered in other fields.
The CFI reviewed the established case law and confirmed that the board had correctly defined the relevant public by stating that the goods and services at issue were aimed at consumers in general. It added that the absolute grounds of refusal had been raised solely in relation to the English and French languages (in which the word 'unique' is a dictionary term), and that the relevant public was thus composed of average English-speaking and French-speaking consumers.
The CFI further held that:
  • the board had not mistakenly concluded that the mark was devoid of distinctive character; and
  • it had sufficiently shown this by stating that the term could refer to any goods or services.
The CFI stressed that once the board has established the lack of distinctive character of a mark, it is up to the applicant to prove that the mark possessed distinctive character.
The CFI further held that:

  • the board could make an overall assessment of the lack of distinctive character in relation to all of the goods and services in question; and
  • global appreciation was permissible because the goods and services had an identical or very similar function, as they related to telecommunications and were intended for the public at large.
The CFI went on to dismiss the argument that registration of the mark would not prevent descriptive use by others, stating that France Télécom had confused the grounds of lack of distinctiveness and descriptiveness, the latter of which took into account the availability of a term for use by competitors.

In conclusion, the CFI reiterated that earlier decisions of OHIM were not binding and that the latter could not make decisions based on its own case law. The appeal was thus rejected with costs against France Télécom.

Chris McLeod, Hammonds LLP, London

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