Guidance provided on registrability of marks containing Latin or scientific words

European Union
In Rügen Fisch AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-201/09, September 21 2011), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM to cancel the Community trademark (CTM) registration for SCOMBER MIX.

The mark was registered by Rügen Fisch AG in January 2005 in respect of fish and related goods in Class 29 and advertising in Class 35 of the Nice Classification. In August 2005 Schwaaner Fischwaren GmbH filed an application for a declaration of invalidity of the registration under Article 51 of the Community Trademark Regulation (40/94), now Article 52 of the Community Trademark Regulation (207/2009). The application was rejected by the Cancellation Division of OHIM.

In March 2009 the Fourth Board of Appeal annulled the decision of the Cancellation Division on the following grounds:
  • The term 'scomber' is not only the Latin term for 'mackerel', but also the fish’s scientific name. It was sufficient that experts in this field (ie, producers, traders and others involved in the marketing of the goods in question) were able to understand the descriptive meaning of 'scomber' for the term to be barred from registration as a CTM under Article 7(1)(c) of the regulation.
  • The combination of the words 'scomber' and 'mix' must be considered descriptive as a whole.
Rügen Fisch appealed against this decision on the basis of a breach of Articles 7(1)(c) and 7(1)(b) of the regulation.

The General Court reiterated the key issue when considering the descriptiveness of a mark: whether there is a sufficiently direct and specific relationship between the mark and the goods and services at issue that the relevant public would immediately perceive the mark as a description of the goods or one of their characteristics. The court recognised that the goods in Class 29 were convenience goods. Therefore, the relevant public could be described as the average EU consumer, who would be reasonably well informed, attentive and circumspect.

In line with earlier case law, the General Court held that OHIM must, under Article 7(1)(c), determine whether a trademark represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned, or whether it is reasonable to assume that it might be the case in the future. If, at the end of that assessment, OHIM reaches the conclusion that this is the case, it must refuse to register the mark or declare that the registered CTM is invalid.

As to the term 'scomber', the General Court upheld the Board of Appeal’s assessment that its meaning was easily accessible to consumers of the fish products protected by the registration. The court stated that the meaning of 'scomber' does appear in dictionaries; furthermore, the applicant for the declaration of invalidity had submitted advertisements containing descriptive use of both 'scomber' and the combination  'scomber mix'. Finally, the General Court observed that the Italian word 'Sgombro', meaning 'mackerel', is phonetically similar to 'scomber' so that at least consumers in Italy would directly understand the meaning of the Latin term 'scomber' for mackerel.

As to the combination of 'scomber' and 'mix', the General Court held that the juxtaposition of the words was in accordance with customary spelling and grammatical rules. As a consequence, the court found that SCOMBER MIX was directly associated by the relevant public with the goods and services covered by the registration. Therefore, the Board of Appeal had been correct in upholding the application for a declaration of invalidity.

As to Rügen Fisch’s argument that the Board of Appeal’s decision was in breach of Article 7(1)(b), the court held that the board had reached its decision solely on the basis of Article 7(1)(c). Hence, the application of Article 7(1)(b) was not subject of the appeal.

The decision provides useful guidance on the registrability of trademarks containing Latin or scientific words. The General Court clarified that terms which appear in dictionaries and are commonly used by producers and suppliers of the goods in question are likely to be held descriptive even if the goods are directed at the average EU consumer. It seems that, henceforth, companies operating within the fish industry in the European Union will be able to use 'scomber mix' freely without fear of infringement proceedings being brought against them.
 
Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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