Recent Developments in Intellectual Property before the European Courts

RELY-ABLE” Lacks Distinctive Character

On 30 April 2013, the General Court of the European Union (the “General Court”) upheld the decision of the Office of Harmonization for the Internal Market (the “OHIM”) refusing protection of the word mark “RELY-ABLE”.

The sign in question was deemed to lack a distinctive character and was therefore refused registration based on Article 7(1)(b) of the Community Trademark Regulation 207/2009 of 26 February 2009.

The applicant, which mainly performs clinical trials in the pharmaceuticals sector, challenged OHIM’s decision before the General Court because it considered that OHIM had failed to take account of (i) the specialisation of the relevant public and the specificities of the services concerned and (ii) the distinctive features of the sign “RELY-ABLE”.

The General Court determined that the relevant consumer in this case was the English-speaking professional consumer in the European Union, specialised in the pharmaceutical field. The applicant argued that the sign “RELY-ABLE” is perceived as unusual, fanciful and striking by such specialised and highly attentive users and that therefore the sign was distinctive. The General Court dismissed this argument stating that the deconstruction of an adjective into its verbal root and adjectival suffix is not unusual, certainly if it takes account of the relevant public. It follows that the promotional meaning of the sign would immediately be understood and that the sign would not be memorised by the relevant public as an indication of origin.

The applicant had in vain referred to the preliminary ruling of the Court of Justice of the European Union in Koninklijke KPN Nederland, C-363/99, (concerning the registration of the sign “POSTKANTOOR”). In that case, the ECJ held that a combination of words which form a trade mark may be registered if (i) the combination of words creates a different impression from the individual words; or (ii) if the combination of words has its own meaning, independent of the individual words making up the word mark. The General Court distinguished the case at hand from the POSTKANTOOR-case stating that the sign “RELY-ABLE” in no way constitutes a juxtaposition of two words “rely” and “able”, but is a mere deconstruction of a single non-distinctive word “reliable”.

Moreover, the General Court considered that the additional hyphen separating the verbal root “rely” from the adjectival suffix “able” is in the present case not capable of rendering the sign “RELY-ABLE distinctive.

The General Court therefore held that OHIM did not err in law by refusing protection for the word mark “RELY-ABLE” since it is not distinctive and merely contains a “promotional message whose aim is to highlight an important positive aspect of the services”.

Registration of Domain Name Insufficient Proof of Use in Course of Trade

On 14 May 2013, the General Court of the European Union (the “General Court”) confirmed the refusal of the opposition by the proprietor of a non-registered earlier trade mark against the registration of the word mark “PARTITO DELLA LIBERTA” on the basis of Article 8 (4) of the Community Trade Mark Regulation 207/2009 of 26 February 2009. The applicant was the owner of the website “www.partitodellaliberta.it”, a propaganda webpage of an Italian political party.

The General Court explained that in order to be able to oppose the registration of a trade mark, the proprietor must show that (i) the trademark or sign is used in the course of trade; (ii) the sign is of more than mere local significance; (iii) the sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; and (iv) the rights to that sign were acquired pursuant to the Community legislation or the law of the Member State governing that sign prior to the date of application for registration of the later trade mark. These conditions are cumulative.

In the case at hand, the applicant argued that the Office of Harmonization for the Internal Market (the “OHIM”) had failed to take account of the specific nature of the activities for which the sign is used, i.e. political propaganda. According to the applicant, this was apparent from OHIM’s request to receive invoices, brochures or sales figures to prove the use in the course of trade. As evidence of such use, the applicant had presented the website’s visibility on the internet as well as political articles on the website “www.liberali.it” to which the reader is automatically redirected when visiting the website “www.partitodellaliberta.it”.

However, the General Court confirmed that a sign is considered to be used in the course of trade if that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter.

The General Court held that the mere registration of a domain name constitutes a technical operation, the sole objective of which is the use of the domain for a certain period of time on the internet. The registration as such is not indicative of the use of the sign in the course of trade. Moreover, the automatic redirection to the website “www.liberali.it” indicated that the website “www.partitodellaliberta.it” lacked any content of its own. The General Court concluded that the redirected political articles could not prove the use of the domain “www.partitodellaliberta.it” in the course of trade.