A - Z is descriptive, says court
The Federal Administrative Court has dismissed an appeal against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark A - Z for goods and services in Classes 9, 16, 35, 38 and 42 of the Nice Classification on the grounds that the mark was descriptive of the goods and services in question (Case B-1580/2008, May 19 2009).
Swiss company AZ-Medien AG applied for the registration of the trademark A - Z for various goods and services in Classes 9, 16, 35, 38 and 42. The IGE refused to register the mark, holding that it lacked distinctive character and, therefore, would not be understood as indicating the origin of the goods. Furthermore, the IGE pointed out that a Google search for 'A - Z' resulted in a high number of hits, which further showed that the mark was not distinctive.
AZ-Medien appealed, arguing that the A - Z mark could be understood in different ways, such as 'A minus Z' or 'A to Z'. However, the Administrative Court held that A - Z would be perceived by the relevant public as meaning 'from A to Z'. Therefore, consumers would understand the mark as being synonymous with the terms 'total', 'complete', 'comprehensive' or 'without exception'.
The court then considered whether A - Z was descriptive of the relevant goods and services. It concluded that the mark was particularly descriptive of:
- goods in Class 16 (printed matters); and
- services in Class 35 (internet auctions).
Finally, AZ-Medien argued that the IGE had allowed the registration of the marks A-Z ALLSPORT in 1999 and A-Z ABLAUFREINIGUNG (German for 'A-Z drain cleaning') in 2006. Therefore, AZ-Medien submitted that its mark should be registered based on the principle of equal treatment. The court held that:
- the registration for A-Z ALLSPORT was too old to use as comparison; and
- the registration for A-Z ABLAUFREINIGUNG did not reflect the contemporary practice and might even be invalid.
Finally, the court pointed out that the A - Z mark was not necessarily descriptive of all goods and services. However, the court held that the mark was highly descriptive of:
- services, as it will always be understood as referring to 'full' or 'comprehensive' services; and
- goods in Classes 9 and 16, as the mark tends to describe the content of the goods.
Marco Bundi, Meisser & Partners, Klosters
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