Legal Updates

Intellectual Property Law – Community Trade Mark – Goods – Description 

The recent case of Colgate-Palmolive Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-136/07) [2009] involved a dispute over an application for the registration of a Community Trade Mark. The applicant in this case filed an application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) in April 1998. The application was for a registration of a Community Trade Mark under Council Regulation (EC) 40/94 (“the Regulation”).

The word sign “VISIBLE WHITE” was the mark in respect of which registration was sought by the applicant.

Then, in October 2003, CMS Hasche Sigle (“CMS”) made an application for a declaration stating that the trade mark was invalid. CMS claimed that the trade mark had been registered in breach of Article 7(1)(c) of the Regulation.

Subsequently, in December 2004, the Cancellation Division dismissed the application and CMS appealed against this decision.

Once the appeal was heard, in February 2007 the Board of Appeal of the OHIM elected to allow the appeal (“the Contested Decision”). The Board of Appeal of the OHIM held that the trade mark in question was descriptive of the goods for which it had been registered, which amounted to a breach of Article 7(1)(c) of the Regulation.

It was of the opinion that the elements “visible” and “white” were individually descriptive, and that therefore the combination of the two words was also descriptive. The Board of Appeal of OHIM believed that the combination of the two elements should also be deemed descriptive in that it was a reference to the desirable result of using the toothpaste or the mouthwash.

The applicant appealed against the Contested Decision and argued that it should be annulled by the Court of Justice of the European Communities.

It was held that for the purposes of Article 7(1)(c) of the Regulation, a particular sign’s descriptiveness could only be assessed by reference to the goods or services to which it was related and to the way in which it was understood by a specific intended public.

It was held that a word sign should be refused registration in the event that at least one of its possible meanings designated a specific characteristic of the goods or services for which it was to be registered. Furthermore, where the mark in question comprised of a number of elements, it was held that it is necessary to establish whether the descriptive characteristics of the individual components were also established for the word mark as a whole.

In this case, the words “visible” and “white” meant that the relevant public could establish immediately and without further reflection a description of the fundamental characteristic of the goods concerned.

Therefore the sign “VISIBLE WHITE” had such a direct relationship with the goods in question that it breached Article 7(1)(c) of the Regulation. As a result, the applicant’s appeal was rejected.

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© RT COOPERS, 2009. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.   

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