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General Court: Volkswagen left with no 'CHOICE'

On top of the omnipresent legal challenges that Volkswagen AG currently faces in the US, the German car producer recently received several adverse rulings on Community trade mark law. In the latest addition to this streak, Volkswagen failed to register the word sign 'CHOICE' as a Community trade mark for several goods and services relating to vehicles in Classes 12, 28, 35 and 37.

In Case T-431/14, the General Court (GC) found that CHOICE was devoid of distinctive character under Article 7(1)(b) Community Trade Mark Regulation. Confirming the initial view taken by OHIM, the Court stated that the term 'choice' could be understood as an adjective or as a noun. The GC, referring to the online version of the Oxford dictionary, also upheld OHIM's assessment that the term 'choice' (when perceived as an adjective) meant 'top quality' or 'exquisite' and (when perceived as a noun) 'the act of choosing' or 'selection'.

Volkswagen tried to argue, among other things, that the relevant public would perceive CHOICE only as a noun. The GC, however, disagreed: consumers were just as likely to perceive the mark applied for as an adjective, not least because adjectives could also be used as a single word – which the applicant had conceded.

As a second line of defence, the applicant claimed that the meaning suggested by the Court for the adjective 'choice' went beyond its semantic content. But the GC was not swayed by this argument either. In the Court's view, the applicant had not provided any evidence showing that the aforementioned meanings of the adjective 'choice' were wrong.

Consequently, CHOICE was held to be understood by the relevant public as an indication of a 'good pick'. According to the Court, this was true not only for the adjective 'choice', but also for the noun, because "this word in its meaning of 'selection' carries the connotation of a particular quality, which is the basis of the choice". The mark applied for, consequently, had a laudatory character "intended to emphasise abstract qualities and to communicate to the consumer that the goods bearing the mark have additional properties that go beyond what can usually be expected" (both quotations loosely translated into English).

Since the word 'choice' was frequently used as a laudatory term in everyday language, added the Court, it could not be suitable as an indicator of commercial origin. CHOICE would rather be perceived by the relevant public as an indicator of high quality and a mere advertising slogan in respect of all the goods applied for.

As indicated above, the present decision is in line with, at least, two recent judgments of the GC concerning the automobile sector. In both cases, Volkswagen was unsuccessful with its application for a word mark consisting, in the GC's view, of a laudatory term (see Case T-216/14 'EXTRA' reported here and Case T-550/14 'COMPETITION' reported here).

That being said, it is difficult to reconcile this string of case law with the decision in Case T-611/13, where the GC found the mark 'HOT' to be inherently distinctive in respect of several goods in Classes 03 and 05 (reported here). In the HOT decision, the GC took a somewhat surprising approach and accepted a minimum degree of distinctiveness on the basis that it had not been proven that the word 'hot' was exclusively a laudatory term, since it also portrayed meanings, such as 'spicy', which lacked a laudatory character. Returning to the Case at hand, this blogger cannot help wondering whether the same could not be said about the word 'choice'.

Posted by: Christian Tenkhoff @ 19.05
Tags: Absolute Grounds, Distinctive Character, CHOICE, Volkswagen, CTM,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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