Two weeks ago in Case C-405/05 Powerserv Personalservice v Office for Harmonisation in the Internal Market - Manpower Inc (MANPOWER) the Court of Justice of the European Communities gave a ruling in the controversial and long-running battle over the MANPOWER Community trade mark.

In March 1996 Manpower applied to register as a Community trade mark the word MANPOWER for goods and services in Classes 9, 16, 35, 41 and 42. Initially the examiner raised objections, but Manpower submitted evidence that the mark had acquired distinctive character in the United Kingdom and Germany and the mark was accepted for registration. In 2000 Powerserv sought a declaration of invalidity on the grounds that the mark was not distinctive and had not been shown to have acquired distinctiveness through use.

The Cancellation Division rejected the application for a declaration of invalidity and Powerserv's appeal against that decision was dismissed by the OHIM Fourth Board of Appeal. According to that Board, 'manpower' was in English a word that was descriptive of the services of an employment agency or temporary personnel services; the descriptive meaning of the word 'manpower' was known to a substantial proportion of the relevant consumers in the UK, Ireland, Germany, Austria, the Netherlands, Sweden, Denmark and Finland (the eight Member States) and, because of the descriptive nature of that trade mark in those eight Member States, it was incumbent on Manpower to prove that, in that part of the Community, its trade mark had acquired distinctive character through use. While the evidence did not demonstrate that MANPOWER had become distinctive when the application to register it was filed, it did show that the mark had acquired distinctiveness through use by the time the application for cancellation had been filed.

Powerserv then applied to the Court of First Instance of the European Communities to have the Board's decision annuled and the mark declared invalid. According to Powerserv, the mark was both initially and subsequently devoid of distinctive character and was descriptive of the goods and services for which it was registered.

The Court ruled as follows:

* The assessment of the alleged descriptiveness of the MANPOWER mark consisted in replying to the question whether the word 'manpower' could, in normal usage from the point of view of the target public, serve to designate the goods or services protected by Manpower's trade mark. The Board was right to conclude that 'manpower' was descriptive, in the UK and Ireland, of the services of an employment agency or a temporary personnel agency: that word had a sufficiently direct and specific relationship with the services in question to enable the relevant public in the UK and Ireland immediately to perceive, without further thought, a description of those services.

* The Board was also right to find 'manpower' descriptive in German since the relevant German-speaking consumer would establish immediately, without further thought, a specific and direct connection between the word and employment agency services or temporary personnel services.

* The Board was however wrong to find that, in the Netherlands, Sweden, Denmark and Finland, the MANPOWER mark was descriptive of the goods and services in question. However, with regard to the other non-English-speaking EU Member States, the Board correctly held that the mark was not descriptive.

* The Board's decision would be altered to the effect that the MANPOWER trade mark was not descriptive, in the Netherlands, Sweden, Denmark or Finland, of the goods and services for which it was registered.

* In all the circumstances, the Board had not made any error of assessment in finding that Manpower's trade mark had acquired distinctive character through use in the UK, Ireland Germany and Austria.