! is not a trade mark says the CFI

On Friday 30 September 2009 the Court of First Instance decided that two trade mark applications for exclamation mark symbols (as shown on the left) are not distinctive enough to qualify for Community trade mark registration, (cases T-75/08 and T-191/08).

So far the decisions are only available in German and French and this Kat will do her best to summarise.

In two related judgments of 30 September 2009, the The Court of First Instance (Seventh Chamber) decided that an exclamation mark cannot be registered as a trade mark, dismissing an appeal by the applicant. German fashion house JOOP! GmbH had applied to register two versions of the exclamation mark, one for a simple exclamation mark, the other contained within a rectangular frame. The applicant had filed its applications for "!" for goods in classes 14, 18 and 25 on 7 September 2006. OHIM's initial examiner and OHIM's Board of Appeal had refused registration of the applications raising distinctiveness objections under Article 7(1)(b) (T-75/08 and T-191/08).

In its decisions the CFI now agreed with OHIM's assessment and took the view that JOOP!'s marks would not be seen as denoting trade origin of the goods covered, such as jewellery, clothing and fashion accessories. Consumers, including consumers having a high degree of attention, would regard a simple exclamation mark which did not contain any kind of stylisation and which did not differ from the standard type font (Times New Roman) as mere promotional message or as a mere eye-catcher ("Blickfang"). The fact that the marks had been designed by a graphic designer could not change the assessment, that consumers would not be in a position to infer the origin of the goods covered by relying on a mere exclamation mark. The court also stressed that it is was irrelevant whether similar signs had been registered by OHIM or by a national trade mark registry. The legality of a decision rendered by OHIM's Board of Appeal had to be assessed in the light of Council Regulation No. 40/94 [now 207/2009] as interpreted by the European Courts and not in the light of the registration practice of the OHIM Appeal Board (BioID C‑37/03, Deutsche SiSi-Werk, C‑173/04, PAPERLAB, T‑19/04). In addition the judges emphasised that it was established case law that the Community trade mark system was an autonomous system and independent from national trade mark laws (electronica, T‑32/00, Sykes Enterprises T‑130/01, LTJ Diffusion T‑346/04).

The court further decided that the rectangular frame used in one of the applications did not render that mark distinctive because the frame could not be regarded as a sufficiently distinctive element. The frame had to be considered as a subordinate element which made the mark appear like a label. Furthermore, placing the mark inside a rectangle was an established and common practice in the relevant industry.

Referring to the ECJ's decision in Nestlé (C‑353/03), the CFI acknowledged that both marks could (theoretically) have acquired distinctiveness through having been used as part of the applicant's "main" trade mark for "JOOP!" (shown to the right). However, the evidence furnished by the applicant only referred to the German market and not to the whole of the European Union. Also, the evidence merely consisted of three photographs showing jeans to which a piece of fabric, or a label, was attached showing an exclamation mark.

Overall, the evidence was regarded as insufficient to prove that the marks had been known to the consumers before the day of application (see ECOPY, T‑247/01).

Finally, the court stressed that additional evidence furnished by the applicant for the first time during the CFI proceedings, could not be taken into account, it was the court's task to asses the legality of OHIM's Board of Appeal decision and not to assess the facts of the case in the light of new evidence (DaimlerChrysler [Kühlergrill/Grill], T‑128/01).

This Kat thinks that these decisions do not come as much of a surprise but might serve as a reminder to applicants to furnish all possible evidence (of acquired distinctiveness) during the OHIM proceedings and not to leave it until it is too late. Hah, says Merpel, as if the lawyers did not know and as if they did not tell their clients over and over again: good evidence is simply very hard to obtain... for oh so many reasons.

The IPKat thanks Bart Goddyn and all the other readers that have alerted him to this decision.