A trade mark can be refused where it is descriptive of the goods and services it covers. This could be where the mark ‘designates the kind, quality, quantity, intended purpose, value or geographical origin’ of the goods or service or other characteristic. For example, ‘GOOD BOOKS’ would be a descriptive trade mark in a class for printed materials and books. But what if I wanted to register a trade mark in the UK or as a CTM for a term which is descriptive of the products sold but in another language? For example ‘BON LIVRES’ or ‘BUENOS LIBROS’ for books.
A recent judgment from the General Court of Justice has confirmed an important distinction when registering foreign language trade marks in separate EU countries and when using the CTM system. Essentially it seems far riskier to register a CTM when the word, in any one of the 23 official languages in the EU, is descriptive of the registered goods.
National registrations in the EU
The resounding principle in EU law is that descriptive foreign language trade marks can be registered where the relevant consumers in the country where registration is sought can not identify the clear meaning of the term.
So if I register the word ‘TABELA’ (‘table’ in Portuguese) in the UK for furniture the question is whether British consumers would identify that ‘TABELA’ actually means ‘table’. If not then the registration would be accepted. This principle was established in the MATRATZEN case where the word MATRATZEN, which means ‘mattress’ in Germany, was successfully registered in Spain as a trade mark for beds.
This is significant as the level of knowledge of German is seen from the perspective of the Spanish consumer.
Here the relevant territory would be that of the whole of the EU. And the relevant public, regardless of where the products are predominately being sold, is the consumer of the product in the particular language of the mark. So a CTM application for ‘TABELA’ would be assessed from the point of view of Portuguese speakers in Portugal, even though I may never sell a product there.
This has been confirmed in the recent ‘WIENER WERKSTATTE’ case. Here the applicants applied to register a CTM for WIENER WERKSTATTE, which translates to VIENNESE WORKSHOP from German to English and refers to a style of product design of the early 20th century. All of the products registered were for a variety of objects from frames to lights to vases.
What is interesting with this case is that the Court’s approach seems to look at the language of the sign and decide whether consumers, where that language is spoken in the EU, would find the term to be descriptive (see para 20 of judgement). The Court thought as German speakers would perceive the descriptiveness of the term Wiener Werkstätte, this was sufficient to have the trade mark refused in the whole of the EU.
In a previous ruling, the Swedish owner of the brand ELLOS applied for a CTM in various classes including class 25 for clothing. The word ELLOS is the third personal male plural pronoun in Spanish. On appeal to the General Court the latter found that, from the perspective of Spanish consumers, the mark ELLOS would denote that the goods concerned were intended for men. The result of the case was to remove the class 25 clothing description from the application (see here).
The impact of the WIENER WERKSTATTE judgment is to confirm that, strategically, a national approach to trade mark registration in the EU could be safer approach where the term in question happens to be one of the official languages of the EU and is descriptive of the products sold in that language.