From the Court of First Instance of the European Communities yesterday comes a decision in Case T-269/06 Rautaruukki Oyj v Office for Harmonisation in the Internal Market.
Rautaruukki Oyj applied to register as a Community trade mark the word sign RAUTARUUKKI for 'common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; metal plates, sheets and coils; metal tubes and profiles; non-coated or coated' (Class 6). The word RAUTARUUKKI, means "iron works" in Finnish. The examiner and the Board of Appeal both considered that the word referred directly to the nature and characteristics of the goods in question, with the consequence that it would be immediately and unequivocally understood by the relevant public, without any effort or analysis, as a clear statement concerning the key feature of the goods covered by the Community trade mark application, i.e. that they were metal products or had been manufactured in an iron works. Nor was there sufficient evidence that the mark had acquired distinctiveness through use. Rautaruukki Oyj appealed on the issue as to whether the evidence established distinctiveness through use.

The CFI dismissed the appeal. Distinctive character acquired through use had to be demonstrated in the part of the European Union where it was devoid of any such character. In assessing, in a particular case, whether a mark has become distinctive through use, account had be taken of factors such as, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the significance of the investments by the undertaking to promote it; the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identified the goods as originating from a particular undertaking because of the trade mark, it had to be concluded that the requirement for registering the mark had been satisfied -- which was not the case here. Rautaruukki Oyj's case was not helped by the fact that supportive affidavits from the Finnish Central Chamber of Commerce and from every Finnish local chambers of commerce but one, and from 92 companies, and the decision of the Finnish Patents Office of 15 August 2006, approving registration of the word mark RAUTARUUKKI for the goods in question, were not submitted in the proceedings before OHIM and were therefore inadmissible before the CFI.