From the European Court of Justice today: Part 2

Here are the rest of today's Community trade mark decisions from Luxembourg ...

Case T-190/05 Sherwin-Williams v OHIM (TWIST & POUR). This was an application to register the words TWIST & POUR for 'hand held plastic containers sold as an integral part of a liquid paint containing, storage and pouring device’ in Class 21 (an example of one such container is displayed, right). The examiner said no, it was non-distinctive under Article 7(1)(b) of Council Regulation 40/94 because it was of the function of the goods for which the mark was to be registered. The Board of Appeal agreed, considering that the fact that the examiner tied an objection based on lack of distinctiveness under Article 7(1)(b) to reasoning based on descriptiveness under Article 7(1)(c) was not fatal. The CFI, dismissing Sherwin-Williams' appeal, agreed since the public interest protected by bars to registration under Articles 7(1)(b) and 7(1)((c) was the same in each case.

Case T-339/05 MacLean-Fogg v OHIM (LOKTHREAD). The trade mark in respect of which registration was sought is the word sign LOKTHREAD, for 'bolts, bolts of metal, nuts, nuts of metal’ in Class 6. The examiner, Board of Appeal and CFI all agreed that this was a non-starter: the mark was both descriptive and non-distinctive. The unusual spelling of 'lock' as 'lok', the absence of a space between the two components of the word and the fact that the word did not unequivocally describe bolts, nuts etc were insufficient to save it, since there was no syntactically unusual juxtaposition.

Joined Cases T‑53/04 to T‑56/04, T‑58/04 and T‑59/04 Budějovický Budvar v OHIM - Anheuser-Busch (BUDWEISER); Joined Cases T‑57/04 and T‑71/04 Budějovický Budvar v OHIM - Anheuser-Busch (BUDWEISER); Joined Cases T‑60/04 to T‑64/04 Budějovický Budvar v OHIM - Anheuser-Busch (BUD). In each of these rulings the CFI dismissed an appeal against a refusal of the Board of Appeal to uphold an opposition based on what was alleged to be an earlier geographical appellation.

As before, the IPKat reserves the right to comment on these cases once he's had long enough to think about them.
From the European Court of Justice today: Part 2 From the European Court of Justice today: Part 2 Reviewed by Jeremy on Tuesday, June 12, 2007 Rating: 5


  1. The LOKTHREAD decision looks harsh. I've said it before and I'll say it again, OHIM and Co don't do coined terms in English very well. LOKTHREAD is not a naturally descriptive term to me.

    May I, Jeremy, through your wonderful blog propose a new, TM deecriptivness test. It's something we use a lot here at the UK-IPO and it's called the 'shop assistant test'.

    Picture yourself in the local DIY store asking the assistant for a pack of "LOKTHREADS". What's their reaction ?

    1. Blank stare - equals registrable trade mark.

    2. Goes away and brings back 'LOKTHREAD' bolts - equals strong, registrable TM.

    3. Asks whether you are referring to bolts - equals potentially unregistrable TM.

    4 Shows you where the bolts are - equals no hope TM.

    5. Say that you are fifth trade mark attorney to ask that question today so **** off, - equals the test has received universal approval and the assistant needs to go on a customer care course.

    Dave, can you knock up a couple of claims for me so I can get the above test patented ?

  2. How about:

    1. A method of assessing the descriptive nature of a trade mark, the method comprising the steps of:
    i) communicating the trade mark to a commercial representative for goods or services to which the trade mark is to be applied;
    ii) receiving a response from the representative regarding the trade mark; and
    iii) determining from the response the degree of descriptiveness of the trade mark.

    2. The method of claim 1 wherein the response from the representative indicates a lack of association in the mind of the representative between the trade mark and the goods or services.

    3. The method of claim 1 wherein the response from the representative indicates a strong association in the mind of the representative between the trade mark and the goods or services.

    I could go on, but you get the gist. I wonder if the USPTO would grant them?

  3. Jeepers that's quick, and very good.

    Usual rate ?

    £10 an hour, plus a discount for the fact that you're newly qualified ?

  4. Thanks for the compliment. My usual rate is rather more than that, I'm afraid, even allowing for the new qualifier discount. You are welcome to employ the services of Eric Potter Clarkson (where I work) if you are interested in finding out more.


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