Is PATENTCONSULT the new BABY-DRY?

This item came to the IPKat from his friend Richard Milchior (Granrut) so long ago that he's almost embarrassed to be posting it now, but here goes anyway. This is news of an appeal which has been lodged by Volker Mergel, Klaus Kampfenkel, Burkart Bill and Andreas Herden against the judgment of the Court of First Instance (Second Chamber) in Case T-335/07 Volker Merkel and Others v Office for Harmonisation in the Internal Market [available in French and German only. So that's why the Kats all missed it!]. You may have missed this little gem, as the Kats did, but it will be fun to see what happens when it gets to the Court of Justice of the European Communities as Case C-80/09 P. According to the notice of appeal,

"The subject-matter of the proceedings is the question whether the term 'Patentconsult' for services in Classes 35, 41 and 42 [in French: "Services d’un conseil en propriété industrielle, en particulier conseils, représentation et recherches (techniques et juridiques) dans le domaine de la protection de la propriété industrielle y compris la protection des obtentions végétales, la protection des dessins ou modèles et la protection des droits d’auteurs ; gestion de droits de protection et de demandes de droits de protection ; évaluation de droits de protection et de demandes de droits de protection ; établissement d’expertises techniques et juridiques ; services d’avocat, en particulier conseils juridiques et représentation ; conseils en matière de développement de produits ; conseils dans le cadre de la protection juridique de produits et de services "] can benefit from protection as a Community trade mark. The Court of First Instance considered that the term 'Patentconsult' was an indication serving to designate the service at issue in a direct and concrete manner. 

The appeal is based on the wrong interpretation and application of Article 7(1)(b) and (c) of Regulation No 40/94.

By its first plea, the appellants claim that the Court committed an error of law in classifying the trade mark at issue as a neologism that was not noticeably different from the sum of its descriptive elements. According to the appellant, the Court found that the mark at issue was not noticeably different on the ground that the mark 'Patentconsult' followed the structure commonly used for similar designations such as 'patent consulting' or 'patent consultancy'. However, that classification was wrong, precisely because 'Patentconsult' did not follow the common - namely grammatically correct - structure, but diverged from it and accordingly represented a striking neologism that was noticeably different from the mere sum of the elements 'patent' and 'consult'.

By its second plea, the appellant claims that the Court wrongly assessed the exclusively descriptive character of the mark 'Patentconsult'. The Court considered that, in respect of that descriptive character, it was immaterial whether other terms could be used for the protected services. However, the appellants take the view that it is precisely in order to be able to claim that there is a 'need to leave free' ('Freihaltebedürfnis'), that a term other than 'Patentconsult' must be used. It is precisely the grammatically incorrect term 'Patentconsult' which is not suitable.

Finally, by its third plea, the appellant claims that the Court was wrong to consider that the respondent's earlier decision concerning the mark 'Netmeeting' and the judgment of the Court of Justice in Case C-383/99 P concerning the mark 'Baby-dry' were not relevant. According to the judgment in Case C-383/99 P, a perceptible difference to the terms used in the common parlance of the relevant class of consumers is apt to confer distinctive character. That case-law has to be followed, in order to guarantee consistency and the reliability of decisions of the Community courts".

Says the IPKat, one entity that will be watching this issue closely is the firm of Blumbach Zinngrebe, with offices in Wiesbaden and Darmstadt, whose website is www.patentconsult.de