• ALICANTE ABSTRACTS

    CFI Enforces Precision in Objections to Evocative Marks

    In a recent decision, the CFI overturned OHIM’s refusal to register EUROPREMIUM for goods and services relating to postal transport (Case T-334/03, Deutsche Post EURO EXPRESS GmbH).

    OHIM and its Board of Appeal had held that EUROPREMIUM would be seen by consumers as denoting goods and services of “notable quality and European origin.” In its view, the term would be seen as general words of praise relating to characteristics of the goods, and its registration was prohibited as a descriptive mark under Article 7 (1) (c).

    On appeal, Deutsche Post argued that there was no sufficiently direct and concrete link between EUROPREMIUM and the goods and services to sustain a descriptiveness objection.

    The CFI agreed with Deutsche Post. Only those signs which are descriptive of the goods or services, or of essential characteristics of them, are barred by Article 7 (1) (c). OHIM’s Board of Appeal had not explained why origin should be regarded as an essential characteristic of postal transport goods and services, which the average consumer would consider when deciding whether to purchase. The CFI did not consider that origin was an essential characteristic in this case. As a result, the prefix “EURO-“ was not in itself descriptive within the meaning of Article 7 (1) (c).

    Nor was the element -PREMIUM objectionable. The CFI held that “when an undertaking extols, indirectly and in an abstract manner, the excellence of its products, yet without directly and immediately informing the consumer of one of the qualities or specific characteristics of the goods and services in question, it is a case of evocation and not designation for the purposes of Article 7 (1) (c)…”

    The element –PREMIUM amounted to abstract and indirect praise which was more evocation than description. Article 7 (1) (c) was concerned with the latter, not the former. The objection was therefore overturned.

     

    Comment

     

    The line between description and evocation may be hard to see.

    Moreover, it may not affect the ultimate result. Trade marks which are laudatory in an evocative way are often likely to be objectionable under Article 7 (1) (b) as devoid of any distinctive character. That did not happen in this case, but arguably only because the Board of Appeal based its decision solely on Article 7 (1) (c). An Article 7 (1) (b) objection may have been upheld by the CFI, who indicated that it was the appropriate basis on which to object to marks that were evocative but not descriptive.

    Nevertheless, the CFI is right to enforce strict discipline within OHIM’s ranks as regards the peg on which objections are hung.

    Improperly raised or vaguely worded objections inevitably result in higher costs for applicants, as arguments have to be made, and more appeals fought, in respect of objections which should not have been raised. Each ground of objection in Article 7 requires a separate and independent test, and it is therefore no answer to say that some submissions would have to have been made in any event. Different arguments apply to different objections.

    Greater focus and precision on the part of OHIM, national offices and, indeed, applicants and advisors is a practical and commendable aim. Even if this decision does not aid those seeking to protect evocative marks, the CFI’s thoughtful and reasoned approach is warmly to be welcomed.