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Tuesday, 7 September 2004

CFI STRETCHES THE POINT IN LIMO APPEAL

Yesterday this blog mentioned that Case T-311/02 Lissotschenko v OHIM had finally been translated into English. This was an appeal by the Community trade mark applicants against the refusal of OHIM to allow the registration of the word mark LIMO for various laser- and light-related products in Classes 9, 10 and 11 of the Nice Classification. Both the examiner and the Board of Appeal found that in electronics the combination of letters ‘LIMOS’ is used as an abbreviation for ‘Laser Intensity Modulation System’: the applicants' LIMO mark was thus basically just a sawn-off acronym. The applicants maintained that the word was distinctive and appealed to the Court of First Instance (CFI).

The CFI dismissed the appeal. Said the court:

"The fact that the sign LIMO is not usually used in specialist circles as an abbreviation for the expression ‘Laser Intensity Modulation’ is not sufficient to conclude automatically that it is not descriptive. For OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94 it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes" (para.32).
The Court added:
"Given that all the products covered by Classes 9 and 10 are intended for specialist consumers likely to know the sign LIMOS as an abbreviation for ‘Laser Intensity Modulation System’ in the field of those goods, and may be incorporated in such a system, it must be held that, in the absence of any evidence to the contrary from the applicants, the sign is descriptive of one of the possible intended purposes of the goods at issue which the relevant public is liable to take into account when making a choice and which accordingly constitutes an essential characteristic thereof" (para.41).
Finally:
"it is sufficient to point out that registration of a word sign must be refused, pursuant to Article 7(1)(c) of Regulation No 40/94, if at least one of its possible meanings identifies a feature of the goods or services concerned" (para.47).
The IPKat reminds the applicants that they should be consoled by the fact that they can still gain registration by acquiring distinctiveness through use. Since there was no suggestion that anyone else in the trade either used LIMO as a trade mark or understood it specifically as having a technical meaning, that should not be too difficult an end to achieve.

More on LIMOs here and here

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