Intellectual Property – Intellectual Property Lawyers – Intellectual Property Right – Trade Mark – Trade Marks – Community Trade Mark
In the recent case of Liz Earle Beauty Co Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs)(OHIM) [2010], the Court of Justice of the European Union partially annulled a decision an dismissed an appeal by Liz Beauty Co Ltd against OHIM.
Liz Beauty Co Ltd applied for a Community Trade Mark (CTM) with OHIM for the mark ‘NATURALLY ACTIVE' in respect of classes 3, 5, 16, 18, 35 and 44. The application was refused on the grounds that trade mark was devoid of any inherent distinctive character as such trade marks are not registrable.
However, a trade mark can acquire distinctive character through use. Liz Beauty Co Ltd had however never furnished such evidence of use which was considered by the examiner and was rejected. Liz Beauty Co Ltd appealed against this decision. The Board decided that the trade mark was devoid of any distinctive character as the phrase 'naturally active' was so general.
The appeal against that decision was dismissed by the Second Board of OHIM on the grounds that the mark NATURALLY ACTIVE was a mere promotional indication of a laudatory nature. The Board held that Liz Beauty Co Ltd had not established that the trade applied had acquired a distinctive character in consequence of the use which had been made of it. Liz Beauty Co Ltd appealed to the Court of Justice of the European Union, seeking:-
· an annulment of this decision; and (ii)
· alleging infringement of art 7(3) of the 2009 Regulation.
The Court of Justice of the European Union decided:
· In order for a trade mark to be distinctive, it had to serve to distinguish the product and/or services from those of other undertakings.
· Accordingly, the mark was incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and/or services, whereby the consumer would acquire the goods to repeat the experience or to avoid them.
· The distinctive character of a trade mark has to be assessed:-
o By reference to the goods and/or services in respect of which registration had been sought;
o by reference to the perception of the relevant public, comprising average consumers of those goods and/or services, in particular because the way in which the public concerned perceived a trade mark was influenced by its level of attention, which was likely to vary according to the category of goods or services in question;
o In this case, the adverb 'naturally' refers to natural ingredients. The adjective 'active' indicates that the skincare goods and/or services had an effect.
o Therefore, the combination of those two ordinary English words gives a clear meaning to the phrase 'naturally active'. In the context of cosmetic goods and/or services, that phrase conveyed the idea that they enabled a result to be achieved that was generated by natural substances.
o The combination of words in the trade mark NATURALLY ACTIVE would not be perceived as unusual by consumers, but as a phrase having the meaning indicated by the Board.
o The literal meaning of the mark is merely to encourage consumers to purchase the goods and/or services. However, those considerations were not directly transposable to the goods in Classes 16 and 18 which did not contain or use any active ingredient. In respect of the goods in Class 16, namely printed matter, in particular, books and other publications designed to ensure the promotion of cosmetic products, the phrase 'naturally active' would be understood as referring to a characteristic of cosmetic products which were often mentioned and represented therein.
o Therefore, the Board was correct to refuse registration of the trade mark applied in respect of the goods in Class 16.
o However, in relation to the goods in Class 18, the Board’s decision contained no explanation regarding why the trade mark lacked distinctive character with respect to those goods as well.
o The Board should at least have drawn a distinction between, on the one hand, goods and services which were directly related to cosmetics, and on the other hand, the goods in Class 18.
o Regarding the goods and services in Classes 3, 5, 16, 35 and 44, the Board had been right to refuse registration of the trade mark. However, in respect of the goods in Class 18, the decision should be annulled in so far as registration of the trade mark NATURALLY ACTIVE as a Community trade mark had been refused in respect of those goods.
· The case law clearly shows that in order to have the registration of a trade mark accepted, the distinctive character acquired through the use of that trade mark had to be demonstrated in the substantial part of the European Union where it had been devoid of any such character
· Distinctiveness which had been acquired through use had to be demonstrated in all the member states in which the existence of the ground for refusal had been established to that effect. Further, it was settled case law that a word sign consisting of English words the combination of which was grammatically correct might have a meaning not only for a public who were native English speakers, but also for a public which had sufficient knowledge of the English language.
· In this case, where all the countries had a public that were native English speakers or sufficient knowledge of the English language, the applicant had never furnished any evidence that the mark applied for had become distinctive through use. In particular, the letters and statements submitted by the applicant as proof of the distinctiveness of the mark in question and the evidence of use submitted to OHIM, concerned only the United Kingdom, Ireland and Germany. Accordingly, the applicant's second plea had to be dismissed.
The case was partially annulled and the remainder of the action dismissed.
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© RT COOPERS, 2010. 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.
