MAXIBRIDGE held to be descriptive for electrical connectors

European Union
In ERNI Electronics GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-132/08, June 11 2009), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had held that the mark MAXIBRIDGE could not be registered as a trademark for electrical connectors. 
 
ERNI Electronics GmbH applied to register the mark MAXIBRIDGE as a Community trademark (CTM) for “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity” in Class 9 and “rubber insulating materials for power lines, electric switches and connectors” in Class 17 of the Nice Classification.
 
The OHIM examiner rejected the application on the basis that the mark was descriptive under Article 7(1)(c) of the Community Trademark Regulation (40/94) and lacked distinctive character under Article 7(1)(b). The Fourth Board of Appeal upheld that decision. In particular, the board considered that the function of the goods in Class 9 was to link together various electrical and electronic apparatus or, in a technical sense, to 'bridge'. The board thus concluded that there was a direct and concrete link between the mark applied for and the relevant goods, in view of the fact that the mark MAXIBRIDGE directly referred to their kind, type and intended purpose. ERNI appealed to the CFI.
 
The CFI reiterated the basic principle that any indication of the kind, type or intended purpose of goods or services must be kept freely available (see Wrigley v OHIM (Case C-191/01) and MacLean Fogg v OHIM (Case T-339/05)). The CFI went on to explain that a descriptive mark is unable to carry out the trademark function of:

"identifying the commercial origin of the goods or services to enable the consumer who purchases the goods or service designated by the trademark to make the same choice if the experience is positive, or otherwise to make another choice."
 
The CFI also explained that when considering the descriptive character of a mark made up of a combination of words, it is necessary to have regard to the impact of the mark as a whole on the relevant public. In this case, the relevant public consisted of specialists in electrical and electronic equipment, as well as average consumers who had at least a basic knowledge of such products.
 
More specifically, following Citicorp v OHIM (Case T-320/03), the CFI decided that bearing in mind that the mark contained two English words, the relevant public would be English-speaking consumers, or people with at least a sufficient knowledge of the English language so as to understand the relevant words.
 
The CFI also stressed that a trademark would be rejected if at least one of its potential meanings described one of the product’s characteristics. The CFI concluded that the term 'bridge' was descriptive of one characteristic of the relevant products, while the second word, 'maxi', served only to embellish that first word by suggesting its importance.
 
In addition, the CFI dismissed as irrelevant the argument that the mark had already been successfully registered in the United States, reiterating that the CTM regime was self-contained and independent, and designed for the purposes of a specific legal order (see Messe München v OHIM (Case T-32/00)).
 
Once more, a trademark application covering technical goods failed on the grounds that the mark was descriptive. The application was up against a relevant public not only tech-savvy, but whose language would be sufficiently technical to encompass a term common in the industry.
 
Bratin Roy, McDermott Will & Emery UK LLP, London

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