Descriptiveness of Community Trademarks since the Baby-dry case-law
26.07.2002
The Boards of Appeal of OHIM seem to search whether the trademark constitutes the normal way to designate a product
September 2001, EJC considered through its judgement **7** that the Community Trademark "Baby-dry" was not descriptive to designate diapers because it is not a usual way to designate these goods or to present their essential characteristics in the common language.Since then, the Boards of Appeal of OHIM seem to search whether the trademark constitutes the normal way to designate a product:- Speechnet (**1**, October 26, 2001) to designate, in the class 9, computer software, in particular a speech recognition program operating on a computer: even if one understands the words "speech" for the language and "net" as referring to the Internet, the expression "speechnet" is not ordinarily used in connection with the services designated in the application. The message implicit in it is vague and undefined. Even if the trademark is loosely suggestive, it is not descriptive.- Clubhotel (**2**, November 8, 2001) to designate goods and services in the classes 9, 16, 41 and 42. Even if the trademark is composed of two words "club" and "hotel", the Board could not establish any direct and obvious link between the sign and the goods and services. The sign does not convey any direct and clear message to the relevant public as to the kind, the quality, the intended purpose or other characteristics of the designated goods and services.- Weblearn (**3**, February 6, 2002) to designate in the classes 9, 16, 41 and 42 goods and services for education: in English, it is not usual to combine a substantive and a verb, this sign is thus not the common way to designate these goods and services.However the combination substantive + verb was considered as usual by the Court of First Instance of the European Communities. In a judgement of February 27, 2002 (**4**) the Court also emphasized the importance of defining the relevant public to determine the distinctive character of a trademark.The issue concerned the term STEAMSERVE for goods of classes 9 and 16. In this case, the public is constituted by average English-speaking consumers, users of the Internet. This public is reasonably well-informed and reasonably observant and circumspect (according to the **5** Lloyd case that is reminded).The Court then examined whether a sufficiently direct and specific relationship between the sign and the designated goods exists. According to the Court, the sign "STEAMSERVE" refers to a "technique of transferring digital data from a server so as to enable them to be processed as a steady and continuous stream". It corresponds to the purpose of some of the designated goods (apparatus for transmitting...). The Court underlined that the technique of transferring digital data from a server enables them to be processed as a steady and continuous stream involves, and indeed requires, the use of those goods. Actually, this technique does not merely constitute a field in which those goods are applied but rather is one of their specific functions. Accordingly, for the public addressed, there is a sufficiently direct and specific relationship between the term STREAMSERVE and those goods.The sign STEAMSERVE has been considered as distinctive to designate manuals and other publications.In another judgement (**6**, February 27, 2002), the Court had to determine the descriptiveness of the sign ELLOS to designate clothing and customer services for mail-order sales."The term ELLOS is the third person plural pronoun in the Spanish language and is frequently used as a collective term designating all members of the male sex."The Court reminded that the targeted public is deemed to be the average, reasonably well-informed and reasonably observant and circumspect consumer speaking Spanish.The word ELLOS may be used to designate the purpose of clothing for male customers. Thus it is considered as representing an essential characteristic of the goods in question.According to the Court, the link between the term ELLOS and clothing appears sufficiently close for the trademark to be considered as descriptive.Considering customer services for mail-order sales, the Court considered that the sex of the customers for whom the services are intended does not constitute a relevant aspect or an essential characteristic of those services. Indeed, the sign ELLOS does not enable the public " immediately, and without further thought, to perceive a description of the services in question or of one of their characteristics, in particular their intended use ".As a conclusion of those judgements, one can say that when a direct, specific, clear and non ambiguous relationship between the sign and the designated goods and services, the trademark should be considered as not descriptive.
