WEDNESDAY, 2 JULY 2008
CTM applicant dreams on, but application fails
The Court of First Instance of the European Communities this morning dismissed Ashoka's appeal in Case T‑186/07, Ashoka v Office for Harmonisation in the Internal Market.
Ashoka applied to register as a Community trade mark the slogan DREAM IT, DO IT! in Classes 35, 36, 41 and 45 (‘Promoting and providing professional assistance to individuals for the exchange of socially progressive ideas regarding public entrepreneurship and with pattern-changing ideas in a variety of fields including social, economic and environmental disciplines’; ‘Financial assistance to individuals and organisations for the exchange of socially progressive ideas regarding public entrepreneurship and with pattern-changing ideas in a variety of fields including social, economic and environmental disciplines; charitable services (fundraising)’; ‘Educational services, namely publishing’; ‘Social services’). The examiner refused the application in respect of all services on the ground that the mark was devoid of any distinctive character. The First Board of Appeal dismissed Ashoka's appeal and confirmed the examiner’s decision, considering that the mark
"'[would] allow the consumer to fulfil [his] dreams’ and that it ‘animat[ed] the consumer to realise [his] dreams; it encourage[d] him to try to achieve them’".The mark therefore
"‘function[ed] first and foremost as an incitement addressed to the relevant public aiming to promote the services in question’ and that, therefore, ‘there [was] no reason to believe that the potential customer [would] see these words as forming a trade mark denoting a particular commercial source of the services concerned’".On this basis the sign as a whole lacked the capacity to communicate to relevant consumers that the services with which it was to be used were those of Ashoka. The Board of Appeal stated that the presence of an exclamation mark at the end of the expression could not alter that finding. Ashoka appealed.
The Court dismissed the appeal, affirming both the decision of the Board of Appeal and its reasoning. It added:
"34 contrary to what the applicant claims, the word ‘dream’ is currently used in English not only to describe dreams and the desire for happiness and success in private life, but also to describe visions and aspirations in public fields, that is to say, inter alia, in political, social, economic, environmental and educational disciplines.
35 An encouragement or an invitation to achieve one’s dreams addressed to a consumer is, therefore, entirely conceivable in the context of the services covered by the trade mark applied for and will be perceived as meaning that those services can help to realise dreams and aspirations".
Posted by: Jeremy Phillips @ 12.58
Tags: aspirational slogans, community trade marks, Registrability,