ECJ REJECTS APPEALS BY KWS SAAT, OHIM

The IPKat has espied two fresh trade mark decisions, delivered by the European Court of Justice (ECJ) only a couple of hours ago. They are

* Case C-447/02 P KWS Saat AG v OHIM . KWS Saat applied to register as a Community trade mark the colour orange for seeds, treatments for seeds and for forestry products (Classes 7, 11 and 31). OHIM and the Court of First Instance (CFI) rejected the application: the colour was devoid of distincctive character for those products, since it was neither original nor even unusual for them. KWS Saat appealed to the ECJ, which today dismissed that appeal. The grounds of appeal were procedural and the judgment contains no striking statements of new law. However, the decision shows that it is a waste of time to try to persuade the ECJ that the CFI has applied a stricter test of distinctiveness for the applicant's colour mark than for is applied to non-colour marks when all the CFI has basically done is to apply the principles enunciated by the ECJ in its earlier ruling (also, incidentally, relating to the colour orange) in Case 104/01 Libertel.

* Case C-64/02 Erpo Möbelwerk GmbH v OHIM. This time the appeal came from OHIM, incensed that the CFI should have allowed the registration as a Community trade mark of the slogan DAS PRINZIP DER BEQUEMLICHKEIT (German for "The Principle of Comfort") for various classes of goods, including furniture. The ECJ concluded that the CFI reached its decision that the sign was registrable without applying more lenient criteria of distinctiveness than those stipulated by the ECJ in its earlier case law. Strangely, the ECJ did not cite any of its big decisions on the distinctiveness of word marks (BABY-DRY, CHIEMSEE, DOUBLEMINT, POSTKANTOOR, BIOMILD), preferring to state its position as stated in recent 3-D trade marks cases involving detergent tablets. OHIM did win one small battle, though. The ECJ held, at para.46, that

"by holding ... that a trade mark is not devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 40/94 unless it is demonstrated that the phrase concerned is commonly used in business communications and, in particular, in advertising – the existence of such a situation not having been established in the contested decision – the Court of First Instance applied a criterion other than the one laid down by Article 7(1)(b) of Regulation 40/94".

This wasn't sufficient to get the ECJ to overturn the CFI's ruling, since there were so many other grounds upon which it could have been justified.

The IPKat feels that ECJ jurisprudence on distinctive character is finally starting to stabilise and become more predictable, at long, long last ...

Principles of comfort here; Southern comfort here; affordable comfort here.