MELTDOWN FOR METAL MARK

Back from its holidays the Court of First Instance of the European Communities has lost no time in dismissing weak appeals against the refusal of OHIM to grant Community trade marks in undeserving cases. Today's victim, in Joined Cases T-367 to 369/02, was Wieland-Werke AG of Ulm, Germany. WW had applied to register the words SnTEM, SnPUR and SnMIX for "metallic semi-finished products in the form of sheets, strips, wires, tubes, sections, rods or the like, especially in non-ferrous metals, such as copper or a copper alloy, having a metallic coating on one side or both sides especially of tin or a tin alloy", all within Class 6 of the Nice Classification. The examiner was unimpressed. In his opinion, the CFI stated:

"the element ‘Sn’ represents the chemical symbol for tin. The element ‘TEM’ is the abbreviation used in the scientific and technical sphere for the word ‘tempered’ in connection with alloys. Consequently, the trade mark SnTEM means ‘tempered tin’. The element ‘PUR’ means pure, so the trade mark SnPUR means ‘pure tin’. Last, according to the examiner, the element ‘MIX’ corresponds to the German for ‘mixture’ and the trade mark SnMIX therefore means ‘tin alloy’".

The examiner also found that each of the trade marks sought was of such a nature as to deceive the public inasmuch as the products in respect of which the applications were made were not consistent with those indications. The Board of Appeal upheld the examiner's decision, so WW appealed to the CFI, which had no difficulty dismissing the appeal. In the CFI's opinion (at paras 40 to 42):

"Finally, so far as concerns the applicant’s argument that the terms SnTEM, SnPUR and SnMIX are not used to designate the intermediary products themselves, or one of their essential characteristics or yet the quality following from the treatment they have undergone, it is enough to observe that it is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation 40/94 should actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient that those signs and indications could be used for such purposes .... Nor can the latter rely on Case T-193/99 Wrigley v OHIM (DOUBLEMINT), set aside by the judgment in OHIM v Wrigley, since it is enough that the sign in question should designate, in at least one of its possible meanings, a characteristic of the goods or services concerned (see OHIM v Wrigley, paragraph 32 and, by analogy, Campina Melkunie, paragraph 38).

The applicant’s argument that there are other terms for designating the same characteristics of its products is not persuasive. It is immaterial whether or not there are synonyms capable of designating the same characteristics of the goods or services mentioned in the application for registration. Although Article 7(1)(c) of Regulation 40/94 provides that, if the ground for refusal set out there is to apply, the mark must consist 'exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that those signs or indications should be the only way of designating such characteristics (see, by analogy, Campina Melkunie, paragraph 42, and Koninklijke KPN Nederland, paragraphs 57 and 101).

It follows from all the foregoing considerations that the word signs SnTEM, SnPUR and SnMIX may serve, within the meaning of Article 7(1)(c) of Regulation 40/94, from the point of view of the targeted public, to designate essential characteristics of the goods falling within the categories covered by the applications for registration".

Wieland-Werke: must look for less descriptive names for its products

The IPKat observes that CFI case law on registrablity is becoming more stable and predictable in the light of the major ECJ rulings over the last year or so on distinctiveness character for word marks.