The power of suggestion

9th Dec 2019

Even a slight link is enough to end evocation, reports Henry Schlaefli. 19 762 C, Dr Richard Dissmann v Jens Poulsen Holding ApS, EUIPO, 30th August 2019.

The Applicant filed for a declaration of invalidity against the registration No 487637 for CREAM (covering “clothing for women”), invoking Article 59(1)(a) EUTMR, which was found to be descriptive under Article 7(1)(c).

The Applicant submitted sufficient evidence that at the time of filing the word CREAM was descriptive for clothing. This included extracts from dictionaries going as far back as 1991, and various extracts from publications showing examples of the word CREAM being used to describe coloured clothing.

Counter arguments

The Proprietor’s counterarguments stated that the mark was suggestive or evocative and that the plurality of the meanings of CREAM implies that consumers are unlikely to perceive it as description of the goods. It referred to a Fourth Board of Appeal decision, which found that the word PINK was not descriptive for sunglasses, bags or bedding. It also submitted examples of registrations that had been accepted, and quoted the EUIPO’s guidelines, for example, the registration of “flamingo” for clothing. It also relied upon an earlier German Court decision that had found infringement of the registered trade mark for CREAM, arguing that the same subject matter had already been decided and could not be considered again by the EUIPO.

In the event that none of these arguments were sufficient the proprietor relied upon evidence of 20 years’ use and that the registration now had acquired distinctiveness.

EUIPO outcome

The EUIPO found the mark to be descriptive for the goods in question for the English-speaking countries. The Office did not go on to consider whether the mark was also non-distinctive or generic. The key points of law being that “it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned” (C-344/07 FOCUS), which was the case here, and “the fact that a word might have different meanings in different context does not preclude the application of Article 7(1)(c)”, if one of the possible meanings is descriptive (T-278/09 GG).

The EUIPO also explained that “evocation is characterised by the absence of a sufficiently close link between the sign applied for and the relevant goods, so that it does not go beyond the lawful domain of suggestion”.

The EUIPO highlighted that its guidelines are not binding legal acts for the purposes of interpreting provisions of EU law. It found as the German Court decision had not decided on validity of the mark but instead on infringement, there was presumed validity. It reiterated that national decisions, from a court or otherwise, have no binding effect on the Office since the EUTMR regime is independent of the national systems. In any case, the earlier national registrations were not in English-speaking countries.

On the question of acquired distinctiveness, despite showing extensive use in other Member States between 2010 and 2016, there was very little evidence concerning the English-speaking territory for which the objection applied. The Office therefore found no acquired distinctiveness for the relevant countries.

Note: at the time of writing, the decision had not been appealed

Key points:

Earlier EUIPO examination decisions, national office and national court decisions are likely to be of little persuasive value
Evidence of acquired distinctiveness outside the countries where the objection bites is unlikely to be helpful

Henry Schlaefli is a Chartered Trade Mark Attorney at Boult Wade Tennant LLP