The IPKat humbly draws your attention to a decision of the OHIM Second Board of Appeal where Beecham unsuccessfully appealed against a decision not to register WHITENING MULTI-ACTION as a Community trade mark for goods associated with oral hygeine.
Rather candidly, not to mention worryingly, the Board admits that:
"It is familiar with the judgments of the European Court of Justice and Court of First Instance and with the decisions of the Boards of Appeal. That very substantial body of case law proves one thing above all: that trade mark examination is not as simple and straightforward as might sometimes be thought. There is no single test, no magic formula, no crystal-clear sentence, no easy-to- use puzzle solver that makes it possible to determine, without doubt or uncertainty, whether a sign is eligible for registration as a trade mark under Article 7(1)(b) and (c) CTMR".The Board hedges its bets and then details all of the possible tests for whether a mark is descriptive or lacking in distinctiveness, and then proceeds to apply them all to WHITENING MULTI-ACTION. According to the Board though, these tests
"cannot be applied mechanically. Trade mark examination is not an exact science. It requires skill, judgment and experience of the marketplace. Sometimes there is no obviously correct answer to the question whether a sign is distinctive or not. Some signs are clearly apt to function as trade marks. Others are manifestly not endowed with that quality. In between, there are many signs that hover on the border- line. The question whether a particular sign is distinctive is not a pure question of law; it depends to some extent on what is happening in the marketplace".In other words, trade mark examiners are very special people with unique talents –- bless!
Also of interest is the Board’s acceptance that the test for distinctiveness has moved on since the ECJ’s Baby-Dry decision and it is now necessary to look at all the case law that has followed it. As a result, any suggestion that the need to keep certain marks free for others to use should not be considered under Art.7(1)(c) is outdated.
The IPKat is rather worried by the Board’s approach. If the tests for distinctiveness and descriptiveness are really as fuzzy as the Board is suggesting, then there can be little predictability in the examination process and it is arguable that many CTM holders cannot be confident that the test has been correctly applied to their marks, leaving those marks in danger of invalidation.
Other ways to find out if your CTM will be registered here, here and here