General Court: presence of 'race' in mark creates immediate and clear connection with automobile sport
In bd breyton GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-520/14, November 25 2015), the General Court has considered the inherent registrability of the word mark RACE GTP for tyre rims.
The applicant applied to register the mark in July 2012, for light alloy wheel rims excluding those for automobile racing or for off-road vehicles.
On examination, OHIM rejected the application under Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009), on the grounds that the word 'race' was descriptive and non-distinctive and that the letters 'GTP' signified 'grand touring prototype'. It held that automobile aficionados would have a raised level of attention and an in-depth technical knowledge, and that consumers would believe that the products dated from the era of GTP racing or were copies of original items, such that the mark would not function as an indication of commercial source.
The applicant appealed and, in March 2014, the First Board of Appeal of OHIM rejected the appeal, essentially on the basis that the mark would be understood as a description of light alloy wheel rims suitable for racing and for racing vehicles.
The appeal to the General Court centred on the argument that the relevant public would not immediately understand the element 'GTP' to mean 'grand tour prototype' and that the mark was therefore not descriptive.
The court considered in particular four main arguments. First, the appellant argued that the letters 'GTP' were not the official initials of the GTP series of races which were known as 'grand touring prototype'. The court rejected this argument, stating that it was necessary to consider the initials from the perspective of the section of the relevant public which knew the GTP series of races by the initials 'GTP'.
Second, the court rejected as irrelevant the argument that 'GTP' could have over 100 meanings and was very rarely used to denote 'grand touring prototype', holding that the presence of the word 'race' in the mark would lead consumers to understand the reference to 'grand touring prototype' in the context of the sales of wheel rims, and that the word 'race' created an immediate and clear connection with automobile sport.
Third, the court dismissed the fact that the appellant was the only producer of goods under the mark, because it was sufficient that the mark could be used in a descriptive sense for it to be rejected.
Fourth and finally, the court dismissed the argument that there was no sufficiently direct link between the mark and the goods, because it is well known that vehicle accessories, including light alloy wheel rims, are often inspired by the designs of products used and tested in vehicles first used in automobile racing. Therefore, the relevant public would make an immediate connection between the goods and automobile sport and GTP racing vehicles, which it would consider to be a source of inspiration for those goods. This link was sufficiently concrete and direct.
The court therefore rejected the appeal with costs awarded against the appellant.
A Google search for 'gtp racing' produces over 480,000 hits, so this application looked likely to hit the skids from an early stage. As the applicant states on its website, “with over 25 years of experience in our business sector, racing is and will remain near and dear to us”, although perhaps not in the context of this particular application.
Chris McLeod, Elkington & Fife LLP, London
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