Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, designs, info-tech and confidentiality issues from a mainly UK and European perspective. Read, post comments and participate!

The team is Eleonora Rosati, Annsley Merelle Ward and Merpel. E-mail the Kats here!

The team is joined by GuestKats Kevin Bercimuelle-Chamot, Jocelyn Bosse, Alessandro Cerri, Anastasiia Kyrylenko, Marcel Pemsel and Anna Maria Stein.

SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Antonios Baris (Book Review Editor), Rose Hughes (PatKat) and Chijioke Okorie (Africa Correspondent).

InternKats: Asude Sena Moya and Söğüt Atilla.
Home / / ARGUMENT GETS A WARM WELCOME FROM OHIM

ARGUMENT GETS A WARM WELCOME FROM OHIM



The IPKat brings to your attention a decision of the OHIM Second Board of Appeal in an application to register the mark WARM WELCOMES for various services. The OHIM examiner refused the application for lack of distinctiveness and applied to the Board. Said the Board:
* English speakers will understand the words ‘warm welcomes’ as a cordial invitation suggesting that the staff will be friendly and will not apply undue pressure on customers. From the trader’s point of view, it draws consumers by reassuring consumers who are unsure about whether to make purchases that they will be treated well, giving traders a strong interest in using those words.

* As a result, the term could not function as a trade mark, and would not be seen as indicating the commercial origin of the goods or services on which it was used. It was the equivalent of ‘welcome to’ or ‘good morning’.

* While the Office may have registered marks containing the term ‘welcome’ before, each case must be judged on its own merits and the legality of decisions must be judged solely on the basis of Regulation 40/94.
The IPKat notes that the Second Board continues to look at the need to keep marks free for other traders to use under the lack of distinctiveness, rather than the descriptiveness, ground. He has a degree of sympathy for this approach, but is pretty sure that it’s not in accordance with the ECJ’s case law.
ARGUMENT GETS A WARM WELCOME FROM OHIM ARGUMENT GETS A WARM WELCOME FROM OHIM Reviewed by Anonymous on Sunday, August 06, 2006 Rating: 5

1 comment:

  1. AnonymousMonday, 7 August 2006 at 13:13:00 GMT+1

    Spot on, Board of Appeal. The funny thing about OHIM however would be that if the mark were WARM WELCOMES in some odd script, or with a border around it, then it wouldn't be 'devoid'.

    Here in the UK we'd probably get into a wrangle with the attorney to the effect that: "well it must be OK for some of the services".

    We could be persuaded that "Warm welcomes" would not be normal or natural language for eg legal services. (That's a joke folks)

    ReplyDelete

All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html

Subscribe to: Post Comments ( Atom )
Powered by Blogger.