TAME IT lacks distinctive character, says CFI

European Union
In Wella AG v Office for Harmonization in the Internal Market (OHIM) (Case T-471/07, September 15 2009), the Court of First Instance (CFI) has provided additional guidance as to where the boundary lies between what is registrable and what is not. Following decisions concerning marks such as BEST BUY and ANEW ALTERNATIVE (for further details please see "'Best Buy' not distinctive rules CFI" and "ANEW ALTERNATIVE will be perceived as slogan, says CFI"), the CFI held that TAME IT was devoid of distinctive character.

Wella AG applied for the registration of the trademark TAME IT in respect of "essential oils, cosmetics and hair lotions" in Class 3 of the Nice Classification. The OHIM examiner refused the application. The Board of Appeal of OHIM affirmed, holding that the mark TAME IT was devoid of distinctive character in relation to these goods, in violation of Article 7(1)(b) of the Community Trademark Regulation (40/94). Wella appealed to the CFI.

Marketing slogans are not automatically excluded from registration as devoid of distinctive character. However, to secure the benefits of registration, the mark must be perceived immediately by the relevant consumers as an indication of the commercial origin of the goods to which the mark is applied.

The CFI first assessed the meanings of the individual elements of the mark. 'To tame' was held to have several meanings, which included, in relation to the goods in question, 'to soften', 'to harness or control' or 'to make tractable'. The word 'it', when assessed in relation to hair lotions, was held to be clearly referring to hair.

Following this assessment, the CFI concluded that the trademark TAME IT would be regarded by consumers as an invitation to use the relevant goods to soften, harness or control hair, or make hair tractable, rather than as an indication of origin.

Wella submitted to the CFI that the verb 'to tame' had other, alternative meanings (eg, to tame wild animals) and, therefore, the promotional nature of 'tame it' would not be conveyed unambiguously. The CFI rejected this argument, stating that the meaning of the verb 'to tame' must be assessed only in relation to the goods covered by the mark, and not in the abstract.

The CFI added that the use of a verb in the imperative is customary in advertising, thus reinforcing the fact that a mark such as TAME IT will be more likely to be perceived as an advertising slogan, rather than an indication of origin.

The decision emphasizes to businesses that care is needed when selecting new trademarks that include a laudatory or descriptive element. While new products may benefit initially from brand names that assist in informing consumers of a product's features, the decision shows that a mark which is perceived by consumers as an advertising slogan or as merely suggesting features of a product, rather than as an indication of origin, will generally be devoid of distinctive character and thus not registrable.

Marketeers should be reminded, prior to building reputation in a new brand, that brand names which are broadly descriptive or laudatory may not be protectable and, therefore, may be available for use by competitors. The benefits of a non-distinctive new brand name must thus be carefully weighed against that name's registrability.

Nick Bolter and Mitain Patel, Edwards Angell Palmer & Dodge, London

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