Transliteration of Greek word for 'colour' held to be descriptive
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In Deutsche Steinzeug Cremer & Breuer AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-281/09, December 16 2010), the General Court (Fifth Chamber) has upheld a decision of the Fourth Board of Appeal in which the latter had found that the word mark CHROMA was descriptive.
On March 6 2008 German company Deutsche Steinzeug Cremer & Breuer AG submitted an application for the registration of the word mark CHROMA as a Community trademark (CTM) for sanitary appliances of ceramic in Class 11 and building materials, not of metal, in Class 19 of the Nice Classification. The examiner rejected the application in its entirety under Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009). The Fourth Board of Appeal dismissed the appeal, ruling that:
- the mark applied for was descriptive for the purposes of Article 7(1)(c), as the sign at issue consisted of the transliteration into Latin characters of the Greek word 'χρ?μα' (colour); and
- since it was a descriptive indication of the characteristics of the goods concerned, there was an absolute ground for refusal in Greece and Cyprus.
For the same reasons, the sign was also devoid of any distinctive character within the meaning of Article 7(1)(b).
Before the General Court, Deutsche Steinzeug submitted the following arguments:
- The mark CHROMA cannot be placed on the same footing as the Greek word 'χρ?μα', and the Board of Appeal did not show that the transliteration into Latin characters was used in the same way as the word in the original language.
- There is no need to maintain the availability of the word 'χρ?μα', as it designates only a type of characteristics of goods and not a characteristic of a product. This was confirmed by the existence of similar CTM registrations consisting of the words 'dimension' or 'brilliance'.
- No quality of the goods at issue was described by the word 'colour', and even less by the mark CHROMA.
- There were national and CTM registrations consisting of the words 'chroma' or 'croma'.
The General Court rejected these arguments. Relying mainly on established case law, it confirmed the refusal of the application on absolute grounds:
- The relevant public of the goods concerned were end-consumers, as well as construction firms, in Greece and Cyprus.
- Transliterations into Latin characters of Greek words must be treated, for the purpose of examining the absolute grounds for refusal, as words written in Greek characters; a faithful transcription of the Greek word meaning 'colour' in letters of the Latin alphabet, which is known by the Greek-speaking consumers concerned, is capable of being immediately and directly grasped by the relevant public.
- The word 'colour' may be used to designate a characteristic of the goods, namely their ability to be presented in various shades of colours, in particular as regards sanitary appliances and bathroom ceramics in colours other than traditional white. Therefore, from the point of view of the relevant Greek-speaking consumers, the mark CHROMA designated a relevant characteristic in terms of the marketing of the goods in question.
- Deutsche Steinzeug could not legitimately rely on allegedly similar CTM registrations, as decisions of the Boards of Appeal are adopted in the exercise of circumscribed powers. Their legality cannot generally be called into question by an argument relating to the existence of a different decision–making practice on the part of OHIM.
- National Greek registrations for the trademark CROMA were not a decisive factor, as the CTM regime is an autonomous system (however, national registrations may be taken into account for the purposes of registering a CTM, in particular by providing analytic support for the assessment of a CTM application).
The dismissal of the action seems rather convincing and the court's reasoning is in line with established case law.
Florian Schwab, Boehmert & Boehmert, Munich
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