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Saturday, 24 October 2015

Greasecutter not cutting the distinctiveness finishing line says the General Court

In case T-610/13, the General Court confirmed OHIM’s refusal of the word mark “GREASECUTTER” for goods in Classes 3 and 5. The mark, an international registration designating the EU, initially owned by Ecolab Deutschland GmbH and then transferred to  Ecolab USA Inc., was filed in connection with, inter alia, ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; essential oils, cosmetics, hair lotions; dentifrices’ in Class 3 and ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; disinfectants, preparations for destroying vermin; fungicides, herbicides’ in Class 5.

With BABYDRY being a blurry jurisprudential moment from the forgotten past, the Office refused the application in the above 2 classes over descriptiveness and consequent lack of distinctive character of the mark at issue for the goods concerned within the meaning of Article 7(1)(b) and (c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark

On appeal, the Second Board of Appeal of OHIM allowed the action in part in respect of ‘dentifrices’ in Class 3 and ‘preparations for destroying vermin; herbicides’ in Class 5. However, it upheld the examiner’s decision with respect to the other goods referred to above on the ground that the mark sought was descriptive of those goods.

In particular, it held that the relevant English-speaking public, upon perceiving the term ‘greasecutter’ of the mark sought to refer to those goods, would understand immediately and without a doubt that they serve to dissolve or reduce animal fat. It further stated that, given that the sign for which registration was sought was descriptive of the characteristics of the goods designated by it, it therefore lacked distinctive character in respect of those goods within the meaning of Article 7(1)(b) of Regulation No 207/2009.

The Board of Appeal’s reasoning was endorsed by the General Court. In applying  Article 7(1)(c) of Regulation No 207/2009, the General Court ruled that a determination must be made as to whether, in the light of the relevant meaning of the word sign at issue, there is, from the point of view of the relevant public, a sufficiently direct and specific relationship between that sign and the goods or services for which registration was sought, such as to enable that public to perceive immediately and without further thought a description of the goods and services in question or one of their characteristics. Accordingly, the descriptive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public.

The Court further noted that, for a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so. This will be the case when there is no perceptible difference between the neologism or the word and the mere sum of its parts.

In the present case, the relevant public was found to comprise both professionals and average consumers and since the mark sought is made up of words from the English language, the assessment of its descriptive character for the purposes of Article 7(1)(c) of Regulation No 207/2009 should be carried out with the English-speaking public in the European Union in mind.

Assessing the mark, the General Court ruled that ‘greasecutter’ is made up of a juxtaposition of two distinct words from the English language, namely ‘grease’ and ‘cutter’. As to the meaning to be attributed to the mark sought, in paragraph 21 of the contested decision the Board of Appeal referred to definitions from the Collins Concise Dictionary of the words of which it is composed, namely ‘grease’, meaning ‘animal fat in a soft or melted condition’ and ‘cutter’, meaning ‘a person or thing that cuts, in particular a person who cuts cloth for clothing’. It further stated that, according to the same source, the verb ‘to cut’ as used in the expression ‘to cut fat’ means, inter alia, ‘to dissolve’ or ‘to break down’ and that the word ‘greasy’ was also used to refer to something that resembles grease, such as ‘greasy hair’ or ‘greasy skin’.

Siding with the Board of Appeal, the General Court found that the mark sought could be construed by the relevant public only as a combination of the two descriptive elements of which it is composed and whose meaning does not extend beyond what each of those elements means separately. Thus, the mark sought, taken as a whole, conveys to consumers, without further thought, that the goods covered by the trade mark application are goods which cut (dissolve) or reduce animal fat or greasiness and is thus directly descriptive of their nature, properties or intended use. Moreover, although the term ‘greasecutter’ does not exist per se in English or other languages of the EU Member States, it is a neologism, being composed of English words which are easily identifiable by the English-speaking public, especially since they form a comprehensible expression obeying English grammatical rules, one which is not unusual in English-language structure.

EcoLab's"CUTTER"
The applicant’s argument that ‘cutter’ refers to a tailor or to an object which cuts or slices was rejected as this would not alter the fact that one of the possible meanings of the verb cut (from which ‘cutter’ stems) is ‘to dissolve’ or ‘to break down’, especially given its meaning as part of the expression ‘to cut fat’. The mere fact that there may be other terms which describe more precisely the characteristics of degreasers or scouring preparations, such as ‘degreaser’, ‘grease remover’ or ‘scouring preparations’, does not rule out the application of Article 7(1)(c) of Regulation No 207/2009 to the word mark sought, given the general interest pursued by that provision. 
Also, a review of the relevant goods demonstrates that they encompass goods which, by their nature, composition, packaging or effects, are intended specifically to remove fat or reduce greasiness. Thus, contrary to the applicant’s claims, the purpose of ‘bleaching preparations’ in Class 3 is, as observed by OHIM, to launder, wash or make clean, with the result that they eliminate or remove any greasy impurities. The same holds true for ‘polishing and abrasive preparations’ in the same class. Although it is true, as the applicant has pointed out, that the latter goods are primarily intended to make a surface smooth, such an action will necessarily have the effect of removing any impurities, including possibly grease. Regarding the ‘essential oils’ also in Class 3, the applicant is incorrect in arguing that they are used solely for their fragrant properties. Some essential oils have antiseptic and antibacterial properties and are used for degreasing or disinfectant purposes. Furthermore, contrary to the applicant’s assertions and as pointed out by OHIM, ‘cosmetics’ and ‘hair lotions’ in Class 3 may have the effect of removing excess sebum produced by the skin. These considerations are also valid, in essence, in relation to disinfectants’ in Class 5, which, by their nature and intended use, have the effect of purifying or sterilising, inter alia by removing or reducing greasiness. The same is true of ‘fungicides’ which, as observed by the applicant, do have as their ultimate purpose the eradication of parasitic fungi. However, that effect necessarily requires a cleaner surrounding environment due to the removal of impurities such as fat or greasiness. Lastly, the ‘pharmaceutical and veterinary preparations’, ‘dietetic substances adapted for medical use’ and ‘food for babies’ in Class 5 include some which, by their nature, composition or effects, are intended specifically to address a health issue characterised by the excessive production of sebum by the skin, excess weight or obesity, or by other conditions requiring the use of medical, dietetic or nutritional goods which have the effect of eliminating or reducing fat or grease.

Consequently, it is reasonable to think that the mark sought will actually be recognised by the relevant class of persons as a description of one of the characteristics of those goods.

The applicant's argument that the Board of Appeal ought to have taken into account the fact that the trade mark GREASECUTTER Plus was registered by the United States Patent and Trademark Office (USPTO) for goods in Class 3 and the registrations as Community marks of the signs GreaseShield and Grease Guardian for certain goods in Class 7, and GREASE FIGHT for certain goods in Class 3 was also unsuccessful. The Court referred to the autonomous nature of CTM system stating that this does not change even if a decision relied upon by the applicant was adopted in a country belonging to the linguistic area in which the word mark in question originated. In terms of the CTMs relied upon, the Court reiterated that although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be rigorous and complete, in order to prevent trade marks from being improperly registered or maintained. Such an examination must therefore be undertaken in each individual case. The registration or maintenance of a sign as a Community mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal. Since the legality of the contested decision concerning the non-registrability of the mark sought as a Community mark for the goods covered by the application has been established directly on the basis of Article 7(1)(c) of Regulation No 207/2009, it is clear from the relevant case-law that it cannot be called into question simply because the Board of Appeal failed to take into account, in this case, the fact that the sign GREASECUTTER Plus had been registered in the United States, or because it failed to follow a certain line of OHIM decision-making practice, if such practice were to be established.

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