Straight outta …?

If you knew how to complete this phrase in 2015, you are part of the few percent of consumers who heard of the city of Compton and knew about its connection with hip-hop and rap music. The General Court considered this group of people to be too small to invalidate two trade marks for ‘Compton’ as geographical names.

Background

On 8 September 2015, BIW Invest AG (‘BIW’) applied for registration of EU trade mark no. 014539092 ‘COMPTON’ for ‘clothing; headgear; footwear’. On 27 June 2016, BIW filed another application for EU trade mark no. 015578776 covering goods in classes 18 (‘trunks and travelling bags; casual bags; gym bags; pouches [bags]’) and 25 (‘clothing; footwear; headgear; waist belts; neckerchiefs; head scarves’). Both trade marks were registered.

In 2020, New Yorker Marketing & Media International GmbH (‘New Yorker’) filed invalidity applications against BIW’s trade marks, alleging that they lacked distinctiveness and were descriptive at the filing date (Art. 7(1)(b) and (c) EUTMR).

The Invalidity Division of the European Union Intellectual Property Office (‘EUIPO’) rejected the applications. The Board of Appeal of the EUIPO (‘BoA’) upheld New Yorker’s appeal and declared BIW’s trade marks invalid. The BoA considered the signs to be descriptive of the geographical origin of the goods. BIW appealed.

The General Court’s decision

The General Court considered the appeals to be well-founded (cases T-746/22 and T-747/22).

A geographical name is non-distinctive and descriptive if two conditions are established:

(1) The name must be known to the relevant public as the designation of a place.

(2) The name must suggest a current association, in the mind of the relevant public, with the category of goods or services concerned, or it must be reasonable to assume that the name may designate the geographical origin of that category of goods or services.

The relevant goods

The BoA assessed the distinctiveness and descriptive character of the trade marks not with respect to the goods as registered but considered it appropriate to assess them in relation to a limited subcategory, namely ‘street fashion’.

The Court held that the BoA may assess absolute grounds for refusal in relation to a subcategory of the registered goods. If a trade mark is non-distinctive or descriptive for such a subcategory, the absolute grounds exist also for the broader category. However, the BoA may not create subcategories arbitrarily. Relevant criteria for defining a subcategory are the purpose and intended use of the goods but not their nature or characteristics.

On that basis, the judges found that a particular fashion style such as ‘street fashion’ is a mere characteristic of the goods. The goods in class 25 have the same purpose, namely to cover the body and protect it from the elements. Likewise, the goods in class 18 have the same purpose, which is to store, protect and transport items. The fact that ‘street fashion’ targets a specific public and is sold in specialised stores or departments was considered irrelevant. The goods cannot be divided into further subcategories. Consequently, the BoA erred in assessing the absolute grounds of refusal in relation to ‘street fashion’.

The relevant public

The BoA considered that the relevant public consists of people interested in ‘street fashion’, which was inspired by the hip-hop and rap movement. Since New Yorker’s evidence largely related to Germany, the BoA limited its assessment to the German public.

The General Court considered that the goods in question are directed at the general public. The BoA may limit its assessment to a part of the (potential) consumers, if it constitutes a non-negligible part of the relevant public. The question whether people interested in ‘street fashion’ are a non-negligible part of the public overlaps with the question how many people know the city of Compton.

The BoA found that Compton is a city near Los Angeles with a population of approximately 96,000 people. Compton is closely linked to the history of hip-hop culture and rap music. The ‘gangsta rap’ of the US’ west coast developed there. Numerous successful rappers come from Compton, including Ice Cube, Dr. Dre, Coolio and Kendrick Lamar, whose music dealt with the lifestyle and living conditions in Compton.

‘Gangsta rap’ became known primarily through the music group N.W.A. and their 1998 album ‘Straight Outta Compton’. Thus, the city of Compton attracted media attention at the end of the 1980s and the beginning of the 1990s. The city regained a high level of recognition through the film ‘Straight Outta Compton’, which was released in Germany in August 2015, i.e. just before the filing of the contested trade marks.

The BoA also found that the rap movement has had a significant influence on street fashion and that consumers interested in street fashion seek to express a certain attitude in their choice of clothes, shoes, luggage and bags. For these reasons, the geographical name ‘Compton’ was known to that public to a considerable extent at the filing dates.

The General Court held that the public as delineated by the BoA (consisting of people interested in street fashion and influenced by the ‘gangsta rap’ movement on the US west coast of the 1980s and 1990s) constitutes a particularly small part of the public.

The evidence submitted by New Yorker did not show that a significant part of the public knew Compton at the filing dates in 2015 and 2016. Hard copy and online articles mentioning the city of Compton did not show how well aware the relevant public was of the geographical name.

New Yorker contended that, in 2015, the film ‘Straight Outta Compton’, telling the history of the music group N.W.A., was watched in cinemas by 2,675,000 people in the EU and more than 547,000 people in Germany. Also in 2015, the 1988 music album ‘Straight Outta Compton’ gained some popularity again, reaching position 36 in the German album charts.

The General Court was not convinced because the people who were aware of these facts would amount to only a few percentage points of the overall population.

New Yorker also referred to BIW trying to popularise Compton in its advertising for the relevant goods. The Court held that the fact that BIW’s advertising described the city of Compton showed that it was not well-known among the general public at the filing dates of the trade marks at issue.

For these reasons, the General Court held that the BoA incorrectly concluded that a non-insignificant part of the public knew Compton as a geographical designation. The BoA incorrectly arrived at the conclusion that the contested trade marks lacked distinctiveness and are descriptive.

Comment

To this Kat’s knowledge, this is the first time that the General Court put a number to what a ‘non-insignificant/non-negligible’ part of the public is. A few (presumably single digit) percent of the population is not sufficient, even if they amount to more than 2.5 million in the EU and more than half a million in a single Member State.

The decision raises the interesting question whether the ‘Compton’ trade marks can still be considered as descriptive. The General Court confirmed that ‘Compton’ was not understood as a geographical name by a sufficiently large part of the public at the filing dates. But could it, at the filing date, reasonably be assumed that ‘Compton’ may be perceived as a geographical name in the future because of the film ‘Straight Outta Compton’ and merchandising that went along with it? So far, it seems that the possibility of such a ‘future descriptiveness’ has only been accepted after establishing criterion (1) mentioned above, i.e. that the sign is perceived as a geographical name. Only for criterion (2), i.e. when assessing whether the public associates the place with the relevant goods or may do so in the future, the courts accepted that future developments may be taken into account (e.g. Court of Justice of the EU, Bundesverband Souvenir - Geschenke - Ehrenpreise v EUIPO, C-488/16 P, at para. 38). Should the case law for criterion (2) also apply to the question whether the sign as such can reasonably be expected to be perceived as a geographical name? I wonder what Dr. Dre’s and Ice Cube’s attitude is towards this question.


The picture was created with Image Creator from Microsoft Designer.