"MISSING LINK" IN BOARD'S REASONING SAVES EUROPREMIUM APPLICATION

Here's another Court of First Instance (CFI) Community trade mark case, posted today: Case T-334/03 Deutsche Post EURO EXPRESS GmbH v OHIM. Euro Express applied to register the word EUROPREMIUM for a wide range of goods and services in Classes 16, 20, 35 and 39 of the Nice Agreement. The examiner refused the application on the ground that the mark was descriptive of the goods and services in question as well as being devoid of any distinctive character within the meaning of Art.7(1)(b) and (c) of Council Regulation 40/94. The Board of Appeal dismissed the appeal on the ground that Art.7(1)(c) precluded registration of EUROPREMIUM: this was because the mark was likely to be perceived by consumers as an indication of the notable quality and European origin of the goods and services covered by it. Euro Express then appealed to the CFI.

Europremium: lucky to win its appeal - but that doesn't mean its mark is registrable

The CFI allowed the appeal, holding that the Board of Appeal had incorrectly refused Euro Express's appeal.The CFI's reasoning was as follows:

* Article 7(1)(c) pursued an aim in the public interest, that the signs and indications referred to by it might be freely used by all. Accordingly, a sign’s descriptiveness could only be assessed by reference to the goods or services concerned and to the way in which it was understood by a specific intended public.

* In this case, the goods and services for which registration was sought were, in particular, goods in various materials intended for packaging, storage or transportation, advertising, management or business assistance services and transport and storage services. Since the word EUROPREMIUM was not composed of elements descriptive of the goods and services in question, it only remained to consider whether, despite that lack of descriptiveness of the elements of which the sign in question was composed, that sign, taken as a whole, enabled the target public to establish a direct and concrete link to the goods and services for which registration was sought.

* The Board of Appeal's decision had merely indicated that the word evoked in the consumer’s mind the impression of high quality European goods and services, without showing that that characteristic would enable the consumer immediately and without further thought to establish a direct and concrete link to the relevant goods and services. Accordingly, in failing to relate its analysis to the goods and services in question and in failing to show that the word EUROPREMIUM understood as a reference to high quality goods and services coming from Europe, might serve to designate those goods and services directly, the Board of Appeal had misapplied Art.7(1)(c) of the Regulation.

The IPKat wonders whether this is a bit of a quibble. It seems implicit from the Board's reasoning that the missing link in its judgment was assumed to be there. Still, for the sake of justice being seen to be done, it is important to make sure that all the steps in the appraisal of an applicant's mark are taken before the decision is given. Merpel says: "who cares? It's a crummy mark and shouldn't be registered except on proof of acquired distinctiveness".