Name of personality test may constitute valid CTM

European Union
In Psytech International Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-507/08, June 7 2011), the General Court has considered the grounds for absolute refusal under Articles 7(1)(b) to (d) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), and the issue of bad faith under Article 51(1)(b).
 
The trademark involved was the word mark 16PF, which was registered as a Community trademark in Classes 9, 16, 35, 41 and 42 of the Nice Classification (Registration 1892652) - in particular, the mark covered data processing services “relating to personality assessment, personality testing, personal evaluation, personal interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personal evaluations and personal interpretation” in Class 35. Among the relevant trade circles, '16PF' is the abbreviation of '16 personality factors', a personality test which was developed by a certain Dr Cattell many decades ago.

In 2003 the applicant, Psytech International Ltd, filed an application for a declaration of invalidity of the mark. However, the Cancellation Division and the Board of Appeal of OHIM found the trademark to be valid. This conclusion was subsequently confirmed by the General Court.
 
Before the court, the applicant first argued that the mark would be understood as a descriptive term. The evidence showed that Dr Cattell's research had led to the creation of a questionnaire in personal assessment that is subject to copyright, and that this questionnaire is commonly called the '16PF questionnaire' or the '16PF test'. The evidence also showed that, wherever the name 16PF was used, it almost always referred to this specific test, which has a single origin. It was also established that the questionnaire was marketed under the name 16PF only by the owner of the mark. The court held that, although 16PF stands for '16 personality factors', this was insufficient to conclude that the mark was descriptive of the goods and services at issue.
 
Second, the applicant claimed that the mark 16PF was generic. According to the applicant, 16PF “is the generic name of the test and, consequently, of all the printed matter in Class 16”. However, it did not claim that the mark was generic with regard to the goods and services in Classes 9, 35, 41 and 42. With regard to the goods in Class 16, the court found that the mark was not generic at the time the application was filed based on the following reasons:
  • the date on which the 16PF tests were first marketed in the European Union was unknown;
  • the trademark owner and its licenses were the only ones who had marketed the questionnaires under this name; and 
  • a third party had started to market tests under the same name, but had stopped after the intervention of the trademark owner. 
Third, the applicant argued that 16PF was a natural abbreviation for '16 personality factors' and, therefore, was devoid of any distinctive character. The General Court held that the alphanumeric combination '16PF' was not used in everyday speech or in professional slang to designate any other goods or services than the particular questionnaire of Dr Cattell. This led to the conclusion that the mark was capable of distinguishing the commercial origin of the goods and services at issue.
 
Finally, the applicant argued that the registration of the trademark 16PF was obtained in bad faith. According to the applicant, the theory on which the 16PF questionnaire is based dates back more than 50 years and registration of the mark would prevent third parties, including the applicant, from making use of this test and theory, even though they had been legally providing training services in connection with the 16PF test. Moreover, the bad faith could be deduced from the fact that the number of goods and services covered by the mark was too large and, therefore, the trademark owner had no intention of using the mark for the entire list of goods and services.
 
The General Court held that the regulation did not provide a basis for a finding of bad faith based on the size of the list of goods and services. Moreover, the goods and services in respect of which the trademark owner had obtained registration were precisely the kind of goods and services which it provided in the context of its commercial activities. The court also rejected the applicant's argument that the registration of the 16PF mark monopolised a “generic scientific theory”.
 
The action was thus dismissed.
 
It is reassuring to see that simple alphanumeric marks enjoy the same protection as other trademarks, and that the fact that a mark consists of a commonly used abbreviation for a questionnaire does not make it descriptive or generic. In view of the tendency of several IP offices in the Europe Union to reject trademarks on the basis that consumers might establish a link between them and certain terms used in the same sector, this decision will be welcomed by trademark owners.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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