|TDI: "Total Design for Infants"?|
In May 2003 Audi and Volkswagen applied to register as a Community trade mark the word sign TDI, for ‘vehicles and constructive parts thereof’ (Class 12). No, said the examiner: TDI was descriptive, lacked distinctive quality and couldn't be shown to have been accepted as a trade mark by the public. The Board of Appeal agreed, adding that the acquisition of distinctive character through use had to be proved throughout the European Union, but there was no such evidence in respect of Denmark, The Netherlands and Ireland [what a remarkable coincidence, chortles the IPKat: DTI is the initial letters of Denmark, The Netherlands and Ireland]. Even regarding the rest of the EU, the evidence furnished was not capable of proving acceptance of the sign applied for in so far as it did not show that that mark enabled consumers from those countries to identify the commercial origin of the goods in question.
This morning the General Court dismissed Audi's and VW's further appeals on every imaginable ground (or so it seems: misapplication of rules barring registration of descriptive and distinctive signs, failing to apply correct test for acquisition of distinctive character through use, not letting them get away with registration when it had been registered elsewhere, allowing other initials to be registered but not theirs, breach of natural justice, failure to examine the evidence, prejudice against men with moustaches ...). Significantly, the Kat dredged this little gem out of another sadly long judgment:
"71 Contrary to the applicants’ contentions, the Board of Appeal did not find that there had been no use as a trade mark on the basis of circular reasoning in assuming that, as the sign is descriptive, it could not be used as a trade mark.T-D-M here
72 ... the Board of Appeal analysed a number of advertisements submitted by the applicants. ... [A]s the Board of Appeal rightly found, that advertising material clearly gives the relevant public the impression that the sign TDI was not used to identify the commercial origin of the goods in question, but to describe a characteristic of the motor vehicles in that material, namely that of being equipped with a direct fuel-injection diesel engine.
73 In addition, in the advertising material submitted by the applicants and included in the administrative file, the sign TDI always appears with another mark belonging to the applicants, such as the trade marks Audi, VW or Volkswagen [Just look at that! Remember how Sir Robin Jacob characterised "limping marks" and got a bit of a ticking off from the Court of Appeal in Philips v Remington? Isn't this exactly what he was talking about?]. The Court has, however, held on numerous occasions that advertising material on which a sign which is devoid of any distinctive character always appears with other marks which, by contrast, do have such distinctive character does not constitute proof that the public perceives the sign applied for as a mark which indicates the commercial origin of the goods ... [No problem here, then, says Merpel. Audi should start selling cars and parts that are devoid of any branding except 'TDI', then come back to Alicante later ...]. ...".