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Wednesday, 6 February 2013

Spiritual issues? Try transcendental meditation, says the EU General Court

Today, the Second Chamber of the General Court handed over two interesting judgments (cases T-426/11 and T-412/11, Maharishi Foundation Ltd. v OHIM), which provide useful guidance on the evaluation of the descriptive character of a sign, as well as on the notion of relevant public, in relation to a word sign whose meaning can be easily understood by consumers residing in different member states, due to its closeness to equivalent expressions in other national languages.

In 2009, Maharishi filed a Community trade mark (CTM) application for the word sign “MÉDITATION TRANSCENDANTALE”, in relation to Class 16 (instructional and teaching material), 41 (education; providing of training; entertainment), 44 (medical services; hygienic and beauty care for human beings) and 45 (personal and social services rendered by others to meet the needs of individuals) of the Nice Agreement. The application was rejected pursuant to Article 7(1)(b) and (c) of the CTM Regulation and the examiner stated that Maharishi had failed to prove that the sign had acquired distinctive character through use in Belgium and France, ex Article 7(3).

On appeal, the Second Board of Appeal of OHIM upheld the decision concerning the applicability of Article 7(1)(b) and (c), but remitted the case to the Examination Division for re-examination of the applicability of Article 7(3). The Board of Appeal held that the relevant public consisted “at least of French-speaking consumers of the public at large in the European Union” (with the exception of ‘instructional and teaching material’, directed at professionals in the educational sector). However, it noted that the words “méditation” and “transcendantale” share a common Latin origin and are present, in identical or close terms, in almost all the languages of the European Union: thus, the notion of relevant consumers extended beyond the French-speaking countries and comprised almost the whole EU, with the exception of Bulgaria and Greece. Assessing the applicability of Article 7(1)(c), it found that the sign was descriptive, as the relevant consumers would immediately understand it as an indication that the services provided concern the act of reflecting on a subject that goes beyond the world of the senses. Consequently, it also ruled that the mark lacked distinctive character, due to its descriptiveness and inability to identify the origin of the goods or services. The Board of Appeal noted that, as the expression is commonly used to refer to a special meditation technique, allowing its registration would amount to conferring a monopoly on it. Relying on Article 64(2), the Board of Appeal remitted the evaluation of the applicability of Article 7(3), in light of the additional evidence submitted by the applicant, to the Examination Division, which had erroneously restricted the relevant territory to France and Belgium.

Maharishi challenged the Board of Appeal’s decision with four pleas, respectively concerning Article 7(1)(a) and 75, 7(1)(b), 7(1)(c) and 7(3) of the CTM Regulation. The General Court swiftly rejected both OHIM’s remarks on (non) admissibility of the action and the applicant’s first plea. On the former, it found that the Board of Appeal, although allowing the appeal and remitting the case to the Examination Division, had upheld the examiner’s conclusions concerning the applicability of Article 7(1)(b) and (c), thus ruling unfavourably for the applicant, and that it had enlarged the relevant territory to all the member states of the European Union, with the exception of Bulgaria and Greece, thus affecting the applicant’s burden of proof in relation to Article 7(3). On the latter, the Court held that the contested decision was not based on Article 7(1)(a) of the CTM Regulation: the Board of Appeal’s evaluation of the expression “méditation transcendantale” as generic related only to the assessment of its descriptive and non-distinctive character.

The Court devoted its (non) transcendental meditation to the analysis of the third plea brought by the applicant, concerning the alleged infringement of Article 7(1)(c). This provision states that:

The following shall not be registered:

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.
According to the General Court, this article “pursues an aim which is in the public interest, which consists of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services”. A word sign falls within the scope of Article 7(1)(c) if at least one of its possible meanings allows “the public concerned immediately to perceive, without further thought, a description of the category of goods and services in question or one of their characteristics”.

Examining the applicant’s arguments, the Court firstly assessed the concepts of relevant consumer and territory, as adopted by the Board of Appeal. The inclusion of Luxembourg, as a country where French is one of the official languages, was obviously upheld. The enlargement of the concept of relevant consumer shared the same fate, as the judges recognised that the expression “MÉDITATION TRANSCENDANTALE”, although made up of two French words, could be understood by a consumer in the member states (with the exception of Greece and Bulgaria) who does not speak French, because of the closeness of that sign to its equivalent in other national languages:
“… while there are certain differences, both visually and with regard to pronunciation, between the words translated into the various languages referred to … those differences do not outweigh the fact that they have a common Latin stem. That is even more so where, as in the present case, an expression is made up of two long words, of at least four syllables each, in almost all the languages concerned. Furthermore, the question is whether the expression ‘méditation transcendantale’, rather than each of its two words considered separately, can be understood as being equivalent to the other expressions … However, taking those expressions into account in their entirety, the visual and phonetic differences that can affect either of their two words recede in favour of an overall resemblance that is strong or very strong.”
Let me meditate for a little longer...
The Court underplayed the importance of the relative position of the two words, holding that the public, especially in romance language countries, is accustomed to inversion of the normal syntax of words ("Round about the cauldron go, in the poison'd entrails throw", declaims an inspired Merpel).

On the descriptive character of the word sign, the General Court found that the expression complied with the rules of syntax and word composition of the French language. It consists of the adjective “transcendantale”, which concerns something that goes beyond the world of the senses, and ‘méditation’, which refers to the act of reflecting, thinking deeply on a subject, to achieve something. The judges rejected Maharishi’s arguments concerning the peculiarities of this expression, and its alleged philosophical and mathematical meanings, clarifying that “the fact that the mark applied for can have other meanings ... does not preclude the application of the absolute ground of refusal referred to in Article 7(1)(c)”. Further, the word sign at issue may not give a precise indication of the meditation technique or of its subject, but the consumer, noted the Court, has a direct, certain and unambiguous understanding of that expression. A sufficiently direct and specific relationship could thus be established for all the classes of services and goods indicated by the applicant.

Citing Article 7(1), the General Court observed that, for a sign not to be registrable as a Community trade mark, it is sufficient to establish that one of the absolute grounds for refusal applies. Accordingly, it did not examine the plea concerning the alleged infringement of Article 7(1)(b), but took the occasion to note that a descriptive word sign is “necessarily devoid of any distinctive character with regard to the same goods or services”.

The plea concerning Article 7(3), which excludes the applicability of Article 7(1)(b) and (c) if the trade mark has acquired distinctiveness through use, was declared inadmissible, as the Board of Appeal had not ruled on the matter, but merely remitted the question to the Examination Division.

Now, for the reader to get an idea of the second case, it should be sufficient to say that the word sign at issue was “TRANSCENDENTAL MEDITATION” (Board of Appeal's decision here) and that the Court consulted the Oxford Dictionary of English, instead of the Grand Larousse en 5 volumes…

The IPKat appreciates the General Court's meditations on these two cases. It is certainly interesting to note that the notion of consumer applied by the Court refers to an individual with a good knowledge of syntax, vocabulary and at least a basic comprehension of philosophical concepts. Perhaps, this could be the right time to seek some uniformity in the way consumer is defined across different areas of EU and national law.

Tips on meditating here.
This Kat's favourite music for meditation here.
CNN Health's "Seeking Serenity: When lawyers go zen" here.

1 comment:

Anonymous said...

Interesting read and observation. Whilst there are other cases that showcase the problem even more evidently, the notion of consumer would certainly benefit from a more uniform approach.
I doubt it will ever happen, though... (http://www.law.nyu.edu/ecm_dlv1/groups/public/@nyu_law_website__journals__law_review/documents/documents/ecm_pro_058045.pdf)

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