In Case T‑108/09 of 19 May 2010, the General Court decided that the OHIM Board of Appeal had correctly found that German toy maker Ravensburger AG's Community Trade Mark registration for MEMORY covering ‘games recorded on data carriers of all kinds’ in class 9 and ‘board games’ in class 28 was descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94.
Spanish toy maker Educa Borras, SA had started invalidity proceedings against Ravensburger's mark and OHIM's Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(b) and (c) of Regulation No 40/94 which was upheld by OHIM's Second Board of Appeal of OHIM. Ravensburger appealed to the General Court.
It is noteworthy that the General Court expressly approved the use of English‑language websites from outside the European Union to determine whether the average English-speaking consumer will perceive a mark as descriptive. The most pertinent paragraphs of this judgment are set out below:
30 In the present case, as the Board of Appeal pointed out at paragraph 19 of the contested decision, the goods in question are directed at general consumers. Therefore, in view of the fact that the word ‘memory’ is an English word, it should be determined whether the average English-speaking consumer, who is reasonably well-informed and reasonably observant and circumspect, will perceive the mark at issue as a description of one of the characteristics of the goods in question.
31 It is not disputed in the present case that the goods for which the mark at issue was registered include, in particular, memory games, in which the key element for success is that the participants use and develop their memory well. It is therefore clear that the word ‘memory’ describes directly and specifically one of the characteristics and purposes of the games for which the mark at issue was registered.
32 In that regard, the Board of Appeal cannot be criticised for having relied on English‑language websites outside the European Union to conclude that the word ‘memory’ was descriptive for the purpose of Article 7(1)(c) of Regulation No 40/94 for the goods in question in the English-speaking countries of the European Union.
33 While there are some differences of vocabulary between United Kingdom and American English, it is well known that, as a general rule, words and expressions have identical connotations in these two variations of English. In the present case, the applicant did not put forward any valid argument showing that this is not the case for the word ‘memory’.
34 Finally, the applicant’s argument that the Board of Appeal did not take into account the situation prevailing in the European Union at the time of the registration of the mark at issue must be rejected, in that the word ‘memory’ was not, on that date, used to describe the goods in question.
It should be noted that Ravensburger AG still owns German trade mark No. 39933598 Memory in classes 9, 28 as well as International trade mark No.00393512 MEMORY covering class 28.
The decision can be retrieved by clicking here.