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Tuesday, 6 November 2007

Two from the CFI

The IPKat brings details of two of today's CFI decisions.


VOM URSPRUNG HER VOLLKOMMEN

This phrase was applied for as a CTM for various beverages, but was rejected by OHIM for lack of distinctiveness and descriptiveness. It appears to mean 'pure from the source' (thought the CFI does not seem to feel it overly necessary to provide a complete translation). The CFI agreed with OHIM that the phrase was descriptive, and therefore felt it unnecessary to consider distinctiveness. According to the CFI:

  • The slogan was gramatically correct and was not an unusual combination of words in the German language.
  • Contrary to the applicant's contention, there was a need for other traders to use the phrase. This could be seen that there were already traders who used at least one of the main words which made up the phrase in their slogans. In any event, there does not need to be a need to keep the mark free for it to be classed as descriptive if there is a sufficiently direct and specific relationship between the sign and the goods or services in respect of which registration is sought.
  • The phrase was, in the context, unequivocal. Even if it had been equivocal, this would not have helped the applicant since at least one of its meanings was descriptive.
The IPKat says that this case shows that the CTM project is quite a tricky one. The CFI never gives a clear translation of the phrase. Even if it did, the IPKat doubts whether most Community members would be able to analyse the nuances of the phrase to decide if the average German consumer would view it as a normal way of desiganting the applied-for goods.

REVIAN/EVIAN

This one's a bit of a wash-out. The IPKat was looking forward to a nice Art.8(5) dilution case (IPKat pedantry point: is it possible to dilute water?). Instead, the case was decided against OHIM on an issue concerning the correct timing of translations.

1 comment:

Anonymous said...

CFI is riduculous to turn ECJ's Arcol Capol judgment into the contrary. The parties will not find it very amuzing when the CFI sends the case back to the BoA who will probably still exercise its discretion as before. Second, the judgment only relates to the French trade marks. What about Germany? Even if the further translation was accepted, it still is not likely that the Board will come to a different result for France than for Germany.

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