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Wednesday, 21 November 2007

The wood may be imputrescible, but the mark is subject to decay ...

Although his name is indelibly associated in the mind of European trade mark fans with smell (see Case C-273/00 Sieckmann), the IPKat's friend Ralf Sieckmann has a keen involvement in the registration of colours as trade marks too -- at any rate, in the registration in the names of colours. Ralf tells the IPKat:

"I had the opportunity to act as a counsel on behalf of the intervener with my general lawyer colleague and by myself in the cancellation proceedings before the Cancellation Division and the Board of Appeal at OHIM.

The Court of First Instance In
Case T‑458/05 Tegometall International AG v OHIM yestoday made some observations on the descriptiveness of the word “TEK” being the Italian and French equivalent of the word and brown colour “TEAK”, stating that this word is not eligible for registration for shelves and part of shelves, either metallic or non-metallic, under Article 7(1)(c) of the Community Trade Mark Regulation. The CFI dismissed the action against the decision of the Board of Appeal, ordering cancellation of the trade mark.

The reasoning on the case (Language of the proceedings: German) was as follows:

82 ... the Court notes, as a preliminary point, that this action concerns only the following goods referred to in the trade mark application: shelves and parts of shelves, in particular hanging baskets for shelves, all the aforesaid goods of metal, in Class 6, and all the aforesaid goods not of wood, in Class 20. ... the Court may not take into consideration the restriction of the list of goods covered by the trade mark application to all the goods which do not imitate teakwood, which occurred after the contested decision.

83 The relevant public is deemed to be the average consumer who is reasonably well-informed and reasonably observant and circumspect ... Given the nature of the goods at issue (shelves, parts of shelves and hanging baskets), they are intended for general consumption. Furthermore, the perception of the word ‘tek’ must be assessed in relation to the French and Italian-speaking consumer, since the term at issue is a word in the French and Italian languages.

84 In those circumstances, it is appropriate to determine ... whether, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the mark TEK and the goods referred to ....

85 As regards the meaning of the word sign TEK, ... the applicant did not call into question, before the Board of Appeal, the finding of the Cancellation Division ... that it is true that, according to the dictionary excerpts submitted in Italian and French, the word ‘tek’ serves to designate teakwood. The applicant’s arguments merely claim, in essence, that the use of a metal shelf structure with shelves of metal or of glass clearly does not create the impression that the shelf or shelf parts are of teakwood.

86 The applicant stated at the hearing before the Court, without disputing that the word ‘tek’ is indeed listed in French and Italian dictionaries, that it nonetheless doubted that that word is actually used in that sense.

87 It is therefore common ground that the word ‘tek’ means teakwood in French and Italian dictionaries and that it constitutes one of the ways of writing teakwood in those dictionaries. It is a brownish type of wood, hard, very dense and imputrescible and the word ‘tek’ thus designates a type of wood and the characteristics of that wood.

88 In that regard, it is irrelevant whether ... the word ‘tek’ is used in the sense of teakwood. ... it is not necessary that the signs and the indications composing the mark ... 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 ...

89 As regards the nature of the relationship between the word sign TEK and the goods concerned, the Board of Appeal took the view ... that, since shelves and parts of shelves can be made of teakwood and since it is possible that those goods of metal and of plastic could imitate teakwood, the expression ‘tek’, used in connection with shelves of metal or of plastic, served to designate the appearance, the external aspect and, as the case may be, other qualitative aspects of teakwood.

90 The applicant does not dispute that shelves, parts of shelves and hanging baskets can be made of teakwood or that the above‑mentioned goods may none the less have the appearance of teakwood on account of the fact that shelves are nowadays made of materials other than teakwood which are oiled, lacquered or covered with adhesive film giving the impression of that type of wood. The applicant claims that the relevant public does not understand the word ‘tek’ as a characteristic of its goods since the goods in respect of which the mark was registered are of metal and are not of teakwood or of imitation teakwood.

91 The fact remains that the applicant sought the registration of its mark in respect of shelves and parts of shelves, hanging baskets, ... of metal in Class 6, and for ... goods not of wood in Class 20. The Board of Appeal was therefore right ... that the list of goods ‘[was] absolutely not restricted to shelves of glass or of metal recognisable as such’.

92 Accordingly, having regard to the list of goods in respect of which the mark TEK was registered, the applicant will in future be able to present its goods in materials such as plastic or metal which none the less give the appearance of teakwood. The goods at issue, in particular those made of plastic, will be able, by virtue of their dye, their outward appearance and all the techniques currently on the market for imitating wood, to give the impression that they are of teakwood or that they possess at least certain characteristics of teakwood.

93 Thus, the link between the meaning of the term ‘tek’, on the one hand, and shelves and parts of shelves and hanging baskets, all the aforesaid goods of metal and not of wood, on the other, is sufficiently close to fall within the scope of the prohibition laid down by Article 7(1)(c) of Regulation No 40/94 ...

94 ... it is of little importance that the applicant does not market the goods in respect of which it sought registration with the aim of imitating teakwood. As previously stated, the descriptiveness of a mark may be assessed only in relation to each of the categories of goods and services referred to in the application for registration (see paragraph 81 above). The fact that a word sign is descriptive in relation to only some of the goods or services within a category listed as such in the application for registration does not preclude that word sign being refused registration ...

95 Accordingly, in the light of the specific and direct relationship between the word sign TEK and shelves, parts of shelves and hanging baskets of metal and not of wood, the Board of Appeal rightly held that, on the basis of Article 7(1)(c) ..., the word sign TEK was not capable of constituting a Community trade mark.

96 In so far as a word sign must be refused registration under Article 7(1)(c) ... if at least one of its possible meanings designates a characteristic of the goods or services concerned ..., ... the Board of Appeal did not commit an error of assessment by failing to analyse whether the mark TEK was also perceived as a descriptive indication of certain technical or technological aspects of the goods in English and German‑speaking areas.

97 The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, must therefore be rejected".

Right: the IPKat conducts an inspection of the shelving ...

Thanks, Ralf, says the IPKat -- but why does it always take the CFI so long to articulate its thought-processes? I'm feeling tempted to offer a prize for whoever can provide the most succinct and accurate summary of the passage quoted above. Merpel adds: TEK, meaning teak, for things that look like teak but aren't? Sounds a bit like deception of the consumer to me ...

3 comments:

Anonymous said...

Descriptive if used for shelves of real or look-a-like teak; deceptive if not.

Anonymous said...

How about:

"We agree with the BoA and for the same reasons. Next please."

Anonymous said...

Like EUROLAMB. Descriptive if used for meat from Europe; deceptive if not. Descriptive if used for sheepmeat; deceptive if not. But i wonder how many shoppers go through this intellectual process when faced - and would they thank anyone for doing it for them?

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