WINDVD CREATOR is descriptive of computer software, says CFI

European Union

In InterVideo Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-105/06), the Court of First Instance (CFI) has upheld a decision of the OHIM Board of Appeal which refused registration of the figurative mark WINDVD CREATOR on the grounds that it was descriptive.

InterVideo Inc applied to register the mark WINDVD CREATOR for goods in Class 9 of the Nice Classification (computer software for use in downloading, transmitting, receiving, extracting, encoding, decoding, playing, storing and organizing audio, video, text and other data via local and global computer, cable and wireless networks). The registration was rejected by the OHIM examiner and InterVideo appealed to the Board of Appeal. The board dismissed the appeal on the grounds that the sign was devoid of any distinctive character since, taken as a whole, it was descriptive of the goods to which it related. InterVideo brought an action before the CFI to annul the decision, claiming that Articles 4 and 7(1)(b) and (c) of the Community Trademark Regulation (40/94) had been violated as the board had incorrectly defined the relevant public.

The CFI held that the relevant public in these circumstances was the English-speaking average consumer. Potential purchasers of the goods in question were average consumers who generally use computers, and the sign at issue was composed of elements of the English language. The CFI also held that if a word or neologism is composed of elements which are themselves descriptive, it is not sufficient that each element may be found to be descriptive if the word or neologism itself is not descriptive. In addition, if each element is descriptive in respect of the goods or services, the word or neologism would itself be regarded as a descriptive term, unless there was a perceptible difference between this and the sum of its parts. Therefore, the Board of Appeal had correctly held that the sign described the function of the goods in question and thus had not infringed Article 7(1)(c).

The CFI noted that in these circumstances, there was a direct link between the sign and the goods' intended use which would have been perceived by the relevant public. The CFI held that the word ‘win’ would automatically and immediately be understood by the relevant public as an abbreviation for or reference to the Microsoft Windows operating system. Article 7(1)(b) had not been infringed since a sign that is descriptive of the characteristics of goods or services for the purpose of Article 7(1)(c) is necessarily devoid of any distinctive characteristic in relation to those goods or services within the meaning of Article 7(1)(b).

The alleged infringement of Article 4 was also dismissed on this non-distinctive basis because the figurative elements were so ordinary that they failed to endow the sign with any distinguishing characteristics. The action was therefore dismissed in its entirety.

The principle stated in this case (ie, that a trademark may contain descriptive and/or non-distinctive elements) was subsequently referred to in a decision by the UK Intellectual Property Office (O-361-07, December 12 2007). The office dismissed an appeal brought by La Chemise Lacoste in which Lacoste was opposing an application for registration of a crocodile trademark for dentistry services in Class 44.

James Tarleton, Hammonds, London

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