BUILT TO RESIST crumbles before the CFI

European Union
In JanSport Apparel v Office for Harmonization in the Internal Market (OHIM) (Case T-80/07, September 16 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had refused to register the mark BUILT TO RESIST for goods in Classes 16, 18 and 25 of the Nice Classification.
 
JanSport Apparel applied to register BUILT TO RESIST as a Community trademark for a wide variety of goods in Classes 16 (including paper and cardboard goods), 18 (leather goods) and 25 (clothing). The OHIM examiner rejected the application in respect of all the goods concerned, finding that the mark:

  • consisted exclusively of an indication which might serve in trade to designate the quality of the goods (ie, their durability); and
  • was descriptive under Article 7(1)(c) of the Community Trademark Regulation (40/94) (now Article 7(1)(c) of Regulation 207/2009).
The Second Board of Appeal of OHIM affirmed, but found that the mark was registrable for certain goods in Class 16. In particular, the board held that the slogan 'built to resist' clearly related to the quality, resistance and reliability of the goods concerned. These criteria were found to be of particular importance for goods in Classes 16, 18 and 25. JanSport appealed to the CFI.
 
The CFI held that "the words of the slogan 'built to resist', in themselves or together, refer clearly and directly to the characteristics of the goods concerned". Consequently, JanSport was incorrect in claiming that its mark was "fanciful, imaginative, inventive and thought-provoking". The fact that none of JanSport's competitors used the slogan was held to be irrelevant. Likewise, it was irrelevant that the primary definition of the verb 'to build' was 'to construct (a building)'. The CFI pointed out that 'to build' has three other meanings: ‘to establish (eg, a reputation)’, ‘to raise (hopes)’ and ‘to fabricate’. The court went so far as to say that "it may reasonably be conceded that the quality, resistance and reliability of the goods concerned are characteristics which are taken into account in the choice of the relevant consumer”.   
 
The action was thus dismissed.

This case is the latest in a long line of decisions in which the CFI has refused to register a slogan for lack of distinctiveness. It confirms that the distinctiveness threshold for slogans is still very high.

Peter Gustav Olson, MAQS Law Firm, Copenhagen

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