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Wednesday, 21 May 2008

Enercon appeal dismissed

This morning the Court of First Instance (CFI) of the European Communities dismissed the appeal in Case T‑329/06, Enercon GmbH v OHIM. This decision is so far available only in French and German.

So far as the IPKat can tell, this was an application to register as a Community trade mark a word sign consisting solely of the letter 'E' for various products relating to the generation of energy in the form of electricity in Classes 7, 9 and 19. He thinks the application was refused for lack of distinctive character and for its descriptive nature ("e" being an abbreviation of obvious application in this commercial sector). It seems that the Board of Appeal and the CFI agreed.

The IPKat wonders if one of his more linguistically talented readers could tell him a little more.

Click here for coverage of Rechtssache T‑71/06 Enercon GmbH v OHIM, in which Enercon applied to register as a Community trade mark a shape consisting of an American football-shaped wind turbine.

4 comments:

Anonymous said...

It seems that the good people at Enercon GmbH (or at least their attorneys) are intent on generating a lot of interesting test cases in trademark law.

What is even more curious is that, by contrast, I can't seem to find a single patent or patent application by them (quite a few by the homonymous Enercon Corp., but it appears to be a different company). And this despite the fact that their sector is quite active in patent filings. Maybe someone should tell them to stop being silly and do something about their R&D.

Anonymous said...

I think you will find that the Enercon patents are in the name of Aloys Wobben, the founder of the company. Enercon are not unused to patent disputes having been at the sharp end of an ITC proceedings and other battles with GE.

Jeremy said...

The IPKat has received this well-informed comment from a discreet source: "The trade mark applied for was the individual letter E for wind energy-producing apparatus. The BoA had rejected the trade mark as 1) being devoid of distinctive character since it will be understood as a descriptive indication (see 2) or as a technical abbreviation or code (A, B, C, D, E) and 2) as a
descriptive indication since it is the usual abbreviation for Energy or Electricity, according to the general use in physics (well known since Einstein).
The CFI confirmed the decision as far as it refers to the descriptive
content of the individual letter. It did not examine the distinctive
character. Both CFI and BoA therefore departed from a judgment of the German Bundespatentgericht which had accepted the trade mark since E in isolation has no meaning, contrary to E in a certain context. Insofar as the scope of protection of E was, according to the BPatG, limited to the letter E in isolation. The CFI did expressly not deal with the
additional argument that there was a general need to keep individual
letters free since the number of letters is limited to 26 (similar to colours, the Libertel approach)".

Jeremy said...

... and this has come from Florian Leverve: "The trademark "E" was refused by the examiner on the grounds that the letter "e" was not distinctive (article 7(1)b) and that it was descriptive (article 7(1)c)

the CFI convey with the examiner findings with respect to issues raised under article 7(1)c. It was there held that:
- in that field, many acronyms used the letter 'e' for 'energy'
- 'e' was also a scientific abbreviation for 'energy'
- Finally, the letter 'e' was also used as an abbreviation of electricity

To the argument that the goods only related to the windmill post, hence did not relate to the actual production of energy, the CFI opposed that these goods belonged to the general area of windmill energy production.

In the view of the CFI, the trademark in issue was, with respect to the related products, a descriptive indication pursuant to article 7(1)c; hence was to be refused. This being so, the CFI did not examine whether the requested trademark was also to fail under article 7(1)b

However, few comments were made with respect to article 7(1)b.
It was pointed that an existing registration in a Member States or 'third' State is not determining to the assessment of whether the requested trademark is to be refused under 7(1)b In that respect, it was reiterated that, by virtue of the unitary character of the community trademark, the trademark community regime was an autonomous judicial system, independent to national system". Thank you, Florian.

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