Just because a trademark combines different descriptive elements it is not – when taken as a whole – likewise (automatically) descriptive and thus non-registrable. What may sound obvious has again been confirmed by the General Court in relation to a trademark-application combining a medical technical term with a descriptive term of the everyday language and a descriptive symbol. This decision may serve trademark-applicants and agencies as a hint on how to avoid potential descriptiveness-based rejections of trademark-applications.
A trademark must distinguish goods or services of one undertaking from those of another. Signs which are used to describe the goods or services which are to be offered under the mark are thus not protectable. Based on this “absolute ground for refusal”, the European Intellectual Property Office (EUIPO) rejected a trademark application “Limbic ® Sales” for, i.a., printed matters and certain management and consultancy services.
The applicant unsuccessfully appealed. The EUIPO argued that “limbic” referred to the “limbic system”, the part of the brain influencing the body’s hormonal balance and the autonomic nervous system. “Sales”, the EUIPO determined to be a commonly known word of the English language. The trademark as a whole would thus mean “sales activities related to the limbic system”, meaning goods and services which contain information relating to the customers’ emotions (controlled by the limbic system) and how sales activities could be directed accordingly (General Court, judgment of 2/16/2017, T-517/15, margin-no. 13). Whether the sign applied for was already (commonly) used in a descriptive manner in commerce was not considered relevant. In the EUIPO’s opinion it sufficed that such descriptive use seemed possible.
The General Court reversed the EUIPO’s decision. The descriptive nature of one or more elements of a complex trademark would not in and of itself allow refusal of protection for a sign. Rather, the descriptive character of a sign would have to be determined for the sign as a whole.
In the case at hand, even if the term “limbic” referred to the “limbic system”, the Court found it fanciful in combination with the “®” and the term “sales” in relation to the goods and services applied for. The judges opined that the word “limbic” had been removed from its normal context (“limbic system” or “limbic lobe”). The word was thus deprived of clear and direct meaning. Neither the combination with the “®” nor with the word “sales” were found customary or ordinary (ibid., margin-no.41). Because of the unusual character of the sign in relation to the specific goods and services claimed, the targeted consumer – even if it was an audience of professionals – would have to construe the term’s meaning. The necessity of such process would, however, contradict any assumption of the sign’s descriptive character. The Court reiterated that a sign could only be deemed descriptive, if it’s meaning was immediately and without further thought ascertainable by the targeted audience.
Including technical terms or everyday language into trademarks of course is attractive for undertakings because those terms communicate a clear message and meaning. In using such terms, however, more often than not the thin line to forming a merely descriptive sign is crossed and trademark-applications are thus rejected.
This decision by the General Court may provide a hint to applicants and trademark-agencies on how to avoid such rejections: The court points out that one must not “automatically” derive from the descriptive, defined content of one element (or several) of a complex mark that such meaning (i) remains also in the context of the mark as a whole and (ii) also describes the particular goods and services claimed by the trademark.
Thus, if terms are detached from their normal or customary (and therein descriptive) context and are used in combination with other words or signs, a new complex and non-descriptive sign may be formed. The case at hand shows that this may specifically open up options for the use of technical terms of the medical, chemical or pharmaceutical industries in complex trademarks.
The goods and services of relevance in the respective context have to be kept in mind, however. What may be protectible in one combination may not be in another.Save as PDF
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