'Utilitarian' mark rejected by CFI

European Union
In Européenne de traitement de l’information v Office for Harmonization in the Internal Market (OHIM) (Case T-414/07, July 2 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had refused to register a figurative trademark for goods and services in Classes 9, 35, 36, 37, 38 and 42 of the Nice Classification.
 
In 2006 French company Européenne de traitement de l’information (Euro-Information) filed an application for the registration as a Community trademark (CTM) of a figurative sign consisting of the stylized representation of a hand holding a white rectangular card with three black triangles pointing to the right. The application covered banking-related goods and services in Classes 9, 35, 36, 37, 38 and 42.
 
The examiner and the Board of Appeal of OHIM both refused to register the mark on the grounds that it lacked distinctive character. Euro-Information appealed to the CFI.
 
Before the CFI, Euro-Information argued that the three elements composing the mark (ie, the stylized representation of a hand, the white rectangle and the three black triangles), either in combination or independently, were distinctive. Euro-Information contested the Board of Appeal's finding that the white rectangle represented a credit card, and claimed that the dominant element of the mark - the three black triangles - was distinctive with regard to the goods and services at issue. In addition, Euro-Information argued that it had provided evidence demonstrating extensive use of the mark before the filing date of the application.
 
The CFI first rejected the argument that each element of the mark was distinctive on its own, as the distinctive character of a mark must be assessed as a whole. The CFI further held that the average consumer was frequently faced with such utilitarian signs in places like banks, supermarkets, airports, car parks and telephone booths. Moreover, the CFI found that the three triangles would be perceived as directional arrows showing where the card must be inserted in the cash machine, and not as an indication of origin of the goods and services.
 
The CFI also found that the board had correctly held that its conclusion with regard to the lack of distinctive character applied to all the goods and services at issue.
 
The CFI then examined the evidence filed by Euro-Information to demonstrate that the mark had acquired distinctive character through extensive use. The CFI pointed out that the evidence did not relate to the mark itself, but to a logo consisting of three black triangles. The CFI thus concluded that the evidence was insufficient to demonstrate that the mark had acquired distinctive character through use.
 
Although the decision is unusual in that it focused mainly on the utilitarian character of the elements composing the mark, the CFI arguably reached the right conclusion. The decision also highlights the difficulties faced by CTM applicants to prove that their mark has acquired distinctive character through use.
 
Franck Soutoul and Séverine Fitoussi, INLEX IP EXPERTISE, Paris

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