From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 17 March 2015

Greenworld: a great ideal, but is it okay as a brand for fossil energy goods and services?

An avid and jealous admirer of those who possess the gift of tongues, this Kat recognises his own limitations when it comes to grappling with interesting and/or important decisions (if only all interesting decisions were important, and all important decisions were interesting, he wails!) that reach him in languages in which he always struggles to understand and sometimes struggles even to recognise.  For this reason he is particular grateful to his friend, fellow Class 46 blogger and Taylor Wessing associate Christian Tenkhoff for furnishing him with the following note on a recent decision which, if not ground-breaking, has at least the virtues of being usefully instructive. It also involves a sign that seems to be highly popular with a variety of different and largely unconnected enterprises and which has featured in numerous logos, both currently in use and ready for off-the-peg clients (some of which are illustrated here as a warning to businesses that you may be having the same good branding idea as everyone else).  This is what Christian writes:

One more 'Greenworld' is one too many

In Case T-106/14 Universal Utility International GmbH & Co.KG v OHIM, the General Court of the European Union decided on the registrability of the word mark GREENWORLD. The applicant had applied to register the sign as a Community trade mark (CTM) for goods and services connected to fossil fuels, gas, electrical energy and the supply of these commodities in Classes 4, 35 and 39. Both the Examination Division and the Board of Appeal rejected the application, holding that the mark consisted exclusively of indications which may serve, in trade, to designate characteristics of the goods or service in question, contrary to Article 7(1)(c) of the Community Trade Mark Regulation.

The General Court has now upheld this decision. The Court referred to Case T-208/10 TRUEWHITE at para 31, which stated that 
"a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the … word and the mere sum of its parts".
In similar fashion, the General Court decided the fate of GREENWORLD:
* the word 'green' did not merely refer to the colour green but was commonly understood asmeaning 'eco-friendly'. Products described as 'green' were usually perceived to be less harmful to the environment. 
* it was irrelevant whether the term 'world' had to be understood literally or in a figurative sense. In any case, the relevant public was able to understand the words 'green' and 'world', taken in isolation. 
* the combination of these words, both of which described a characteristic of the goods and services in question, was also descriptive -- and it was in conformity with the rules of syntax and grammar of the English language. Consequently, the term 'greenworld' had an unambiguous significance: it indicated that the marked products helped to conserve the environment.
The Court rejected the applicant's arguments that (i) the ambiguous adjective 'green' could also convey a non-descriptive meaning (see also Case C-191/01 P, DOUBLEMINT, para 32.) and (ii) Wikipedia did not contain information on any descriptive meaning of the term 'greenworld' (see also Case T-325/11, AUTOCOACHING, para 26).

Further, and in line with EU case law (see, for instance, Case C-51/10 P Technopol, paras 74-77), the General Court was not swayed by the fact that the sign GREEN WORLD had previously been accepted as a CTM for goods and services in Classes 7, 37, 39 and 42. According to the Court, the registrability of a sign had to be assessed solely on the basis of the facts of each individual case and no person was entitled to rely, in support of his application, on unlawful acts committed in favour of another.

As frustrating as the latter point may appear to applicants, the present decision confirms once again that the General Court, when assessing a sign's distinctiveness, is not likely to give any detailed consideration to similar or even identical signs registered as CTMs for comparable goods. Notably, the Court did not expressly state that any of the previous "greenworld" registrations constituted unlawful acts.  Nikos Prentoulis discussed the underlying issues of consistency and equality in EU trade mark law on Class 46 some time ago (here). 
Taking a closer look at a different aspect of the Court's line of arguments, it is questionable whether the principle set out in the TRUEWHITE  case was correctly applied to the present trade mark application. As mentioned above, that case concerned a word mark composed of several elements, each of which was descriptive of characteristics of the goods concerned. While the present decision explains the descriptive connotation of the first element ('green'), the Court gave no reason why the second element ('world') had to be considered descriptive of goods and services connected to fossil fuels, gas, electrical energy, or to which aspect of these products the term, taken in isolation, might refer.

These deficiencies do not necessarily mean that the decision on GREENWORLD is wrong. Even if one assumes that a descriptive meaning of the element 'world', as such, cannot be established, a further question remains: does the term 'greenworld' as a whole designate a characteristic of the products concerned and could it be used by competitors for such purposes in the future? In the end, readers may or may not agree with the Court’s decision, depending on how they strike the balance between the public interest in keeping the sign 'greenworld' free to be used by others and the applicant's personal interest in its protection.
It's a green world here
It's a wonderful world here
It's a square world here

For the record, a brief note on this decision also appeared on Class 46, courtesy of our friend and former guest Kat Laetitia Lagarde.

1 comment:

Barbara Cookson said...

This case was covered in the recently completed OHIM seminar on decisions of the trimester - see slides here
I asked a question about the effect of such dismisal of the validity earlier rights, but it was misunderstood. Although as you say the court is not expressly saying anything about the previous marks.

The OHIM emphasised that the office should assess the earlier marks and just dismissing the argument could be seen as a procedural mistake. I only think it is worth making when the earlier mark is identical and preferably when you have a coexistence agreement with them.

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