Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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TUESDAY, 5 MAY 2015
'Smart' move!? General Court rejects Volkswagen's 'extra' word mark
Volkswagen AG failed to register the word "EXTRA" as a Community trade mark for several goods and services relating to vehicles in Classes 12, 28, 35 and 37 (see Case T-216/14).
Upholding OHIM's previous decisions, the General Court found that the mark was devoid of distinctive character. The term "extra" existed in several languages of the EU (meaning "additional" or "extraordinary") and would immediately be understood as indicating that the goods in question were of high quality. In addition, the Court mentioned its BigXtra decision confirming that the term "extra" was commonly used in everyday language and in trade as a generic laudatory term. Therefore, the term could not be regarded as appropriate for the purpose of distinguishing the concerned goods.
In an unsuccessful attempt to convince the Court otherwise, the applicant made reference to an allegedly comparable word sign for automobiles (which had been registered as a Community trade mark without proof of acquired distinctiveness). In this regard, the General Court confirmed once more that the registrability of a sign had to be assessed solely on the basis of the facts of each individual case (see also the Greenworld decision - reported on Class 46 here and on the IPKat here). Since the thorough assessment of the mark "EXTRA" could not result in any other decision, the Court did not deem it necessary to consider the implications of the previous registration at all.
As readers will have guessed, the mark that the applicant referred to was no other than (the quite popular car brand) "SMART". This blogger would have enjoyed reading the Court's view on the potential differences between the words "extra" and "smart" as regards their inherent capacity to fulfil the essential function of a trade mark in connection to automobiles.
Posted by: Christian Tenkhoff @ 08.41
Absolute ground, distinctiveness, laudatory formula, slogan, extra,
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