You probably haven’t been able to miss coverage of Lacoste’s unsuccessful attempt to oppose a dental practice’s application to register a crocodile device, together with the words ‘The Dental Practice’, but the reasoning of the decision demands a closer look.
The first thing to note is that this was an Art.5(2)(b) opposition, i.e. Lacoste was claiming similarity of goods. It seems that they have a registration for ‘medical services’ in Class 44, which the IPKat finds a little disturbing. Ever the dapper feline, he usually tries not to confuse his dentist with his tailor.
The Appointed Person, Professor Ruth Annand, was asked by Lacoste to find that the words ‘The Dental Practice’ were wholly descriptive, and therefore should have been ignored in comparing the marks, leaving a crocodile for crocodile comparison.
Professor Annand found that this was not the correct approach. One has to distinguish between descriptiveness and similarity of marks. In assessing similarity, the marks must be compared overall. Distinctive elements of a mark will not make it more or less similar to other marks, although the distinctiveness of the mark as a whole may expand its scope of protection.
It was true that the words in the applied for mark were descriptive. Ordinarily, but not inevitably, descriptive elements will not be dominant. However, the Hearing Officer was entitled to find in this case that they were dominant. This, together with the differences between the two crocodile devices, meant that the Hearing Officer was entitled to find that the two marks, when taken as a whole, were not similar.
The IPKat wonders if the Appointed Person has gone a bit far here. Granted, the ECJ has told us to look at marks as a whole, but it has also told us that we can take their distinctive and dominant elements into account. It must be a very rare case where a descriptive term will also be dominant. Having said that, she was exercising what is essentially a reviewing function, and so once she found that in some, probably rare, cases the descriptive element could dominate, it was hard for her to find that the Hearing Officer’s decision was clearly wrong. What’s missing though from the decision is the underlying issue – can a company really claim a monopoly in all depictions of a particular animal?