Descriptive foreign terms are registrable, rules court
In Oriental Kitchen SARL v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld the OHIM's decision to refuse the registration of the Community trademark KIAP MOU on the grounds that it is confusingly similar to a prior registered MOU mark.
Oriental Kitchen, a French company, applied to register KIAP MOU (meaning 'crispy pork' in Thai) for goods in Classes 29 and 30 of the Nice Classification. Registration was opposed by Mou Dybfrost A/S, a Danish firm that is part of the Tulip Food Company, based on its MOU mark registered in the United Kingdom for the same types of goods. The OHIM and the Board of Appeal upheld the opposition and refused registration.
Oriental Kitchen appealed to the Court of First Instance, arguing that the term 'mou' means 'pork' in Thai and Laotian, and was therefore purely descriptive of goods in Classes 29 and 30. It argued that KIAP MOU, on the other hand, was sufficiently (i) original to allow registration, and (ii) distinct from MOU to eliminate any likelihood of confusion.
The court disagreed and dismissed Oriental Kitchen's appeal. It upheld (i) the validity of the earlier MOU mark, and (ii) the principle established in the MATRATZEN Case that descriptive terms are registrable as trademarks if the description is in a language not known in the jurisdiction in question (see Nationally registered descriptive term blocks Community trademark).
The court reasoned that the two marks were similar. It also held that there was nothing in the facts of the case to suggest that a significant portion of the relevant public had a sufficient knowledge of the Laotian or Thai languages to understand the meaning behind the MOU mark. Thus, it would be viewed as an invented and inherently distinctive term. The court concluded that it was likely that the relevant public would be confused as to the origin of food products bearing the proposed KIAP MOU registration.
It seems that the court has fully endorsed the principle that foreign language terms can be distinctive and registered as trademarks even if, once translated, they appear to be purely descriptive of the goods in question, provided that the language is not widely known in the geographical area covered by the registration.
It must be kept in mind, however, that this principle has as yet only been applied in opposition proceedings. The real test will be whether it stands up to a sterner examination in an invalidation proceeding.
Peter Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich
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