An absolute (grounds) grilling

21st Jan 2019

Laura Robyn reviews the Applicant’s intelligence arguments. -822/17, Weber-Stephen Products LLC v EUIPO, General Court, 17th October 2018.

 An absolute (grounds) grilling

T-822/17, Weber-Stephen Products LLC v EUIPO, General Court, 17th October 2018

Key points

  • Examiners must use “special care” when considering previous decisions on “similar” applications, but are not bound by them
  • Marks can be held to be descriptive of technology that does not yet exist, if that description will be understood by the examiner

This case concerns an appeal against an EUIPO decision to refuse an application to register the word mark iGrill made by US barbecue giant Weber-Stephen Products LLC (WSP). The application was refused for all goods (computer software, computer hardware and electronic thermometers in class 9, and household, kitchen and barbecue utensils in class 21) under Articles 7(1)(b) and 7(1)(c) of Regulation (EC) No 207/2009. WSP appealed the refusal to the Board of Appeal (BoA).

Appeal dismissed

The BoA affirmed EUIPO’s decision. It found that iGrill was a neologism composed of the prefix “i” and “grill”. Relying on settled case law, the BoA held that the prefix “i” means intelligent or incorporating information technology (IT) and therefore lends a meaning to the sign. Because the goods applied for could be used to operate a grill or with one, the BoA concluded that the mark was inherently descriptive of those goods and not capable of registration. 

WSP appealed to the General Court (GC), arguing that: (i) the level of the relevant public’s attention had been incorrectly decided; (ii) the mark was not descriptive; and (iii) the BoA departed from EUIPO’s decision-making practice.

Appeal points

The Applicant’s argument that the BoA had mischaracterised the level of attention paid by the average consumer to the class 9 goods (as high) was swiftly dismissed by the GC. The GC went on to consider the Applicant’s arguments refuting descriptiveness, which were that:

  • the evidence relied on by the BoA of the mark in use (on a US website) was no longer online at the time of the application;
  • “iGrill” is a neologism that has no dictionary meaning;
  • the capitalisation in “iGrill” is unusual in English syntax;
  • the goods applied for were not intelligent grills or grills using IT (and grills using interfaces or electronic thermometers do not exist); and
  • there is no link between the class 9 and 21 goods.

These arguments were rejected. It is sufficient that the sign might be used, and must be refused if at least one of its meanings designates a characteristic of the goods (DOUBLEMINT). 

The GC also concluded that “iGrill” would be perceived by the relevant public as a combination of the prefix “i” and the commonly known English word “grill”, so could not be a neologism without meaning. This meant the mark was descriptive, notwithstanding that “intelligent grill” technology does not (yet) exist.

In response to the Applicant’s evidence that earlier “similar” variants (including its own US application) incorporating “i” had been registered, the GC reiterated its guidance on EUIPO’s decision-making practice. While it must observe equal treatment and sound administration and have regard to consistency for the principle of legality, it must decide each case on the factual circumstances. The Court, in reviewing legality, is not bound by EUIPO’s decision.

The mark fell foul of Article 7(1)(c), and so there was no need for the GC to consider the Article 7(1)(b) claim. It affirmed the BoA’s decision and dismissed the appeal.

Laura Robyn is a Trade Mark Assistant at Haseltine Lake LLP

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