TUESDAY, 14 AUGUST 2012
OHIM Boards of Appeal: the blue sea of Kiel
On 1 September 2004, Franz Kiel GmbH & co. KG filed an application for the registration of the figurative trademark
For goods in class 12: Vehicle seats, head rests for vehicle seats, seat covers for vehicles, child seats for vehicles, safety belts for vehicle seat and seat systems for buss, railway, vehicle and emergency vehicles.
The application, which claimed the colour blue, matured into registration in 2005.
On 3 March 2012, Gleiss Lutz applied for a declaration of invalidity of the CTM for all the goods on the basis of Article 52 (1) a) CTMR in conjunction with the absolute ground for refusal of Article 7 CTMR.
In the opinion of the cancellation applicant, the trademark should have been refused in application of the judgment “Chiemsee” and it was devoid of any distinctive character.
In fact, the average German consumer understands the word “KIEL” as referring to the capital if the German federal state Schleswig-Holstein, therefore the mark is capable to designate the origin of the goods in the mind of the consumers.
The consumers will perceive the mark “KIEL” not as the indication of the manufacturer, but as the indication of the geographical origin of the goods.
The figurative character of the sign does not render it distinctive, as the font is ordinary and does it not include and remarkable characteristic or property.
The colour blue is not a distinctive element: on the contrary, it evokes water and sea activities, associated with the city of Kiel.
In 2012, the Cancellation Division rejected the request for a declaration of invalidity, but the cancellation applicant filed an appeal.
The Boards of Appeal stressed that, following the principles of the “Chiemsee” judgment, Article 7 1) c) CTMR does not prohibit the registration of geographical names as trademarks, if these names designate place that are not currently associated with the relevant goods in the mind of the relevant group of consumers.
The question was then to determine if the word “KIEL” is associated by the relevant class of person to the category of goods in class 12, such as vehicle seats, head rests for vehicle seats, seat covers for vehicles and similar.
In making that assessment, consideration had to be given mainly to three factors: the degree of familiarity of the relevant class of person with the geographical name in question, with the characteristic of the place and with the category of goods.
Second, it was necessary to ascertain if the geographical name was meaningful with respect to the goods, indicating their quality, or other characteristics of the goods.
In the words of the Board “the product and the geographical name must be close enough for the relevant consumer for him or for her to be likely to make a link between the two.”
The relevant consumer in the case at hand are the manufactures of vehicles, the garages which repair or tune vehicles, but also the general consumers (seats for children, seat covers for vehicles). In this case the market is rather specialist.
In the judgment of the Court, the city of Kiel, for sure the name of a German town with a port on both sides of the Kiel Fjord, is maybe known for its harbor and shipbuilding industry, for its University, for the tourism and sailing activities, but not for the manufacture of seat systems for vehicles, or their parts.
Second, usually manufacturers of seat systems, or of their parts, do not refer to the geographical origin of their goods and the seats could be produced everywhere.
It was therefore unlikely that the relevant consumers would have made a link between the city of Kiel and the goods covered by the trademark.
Lastly, the graphic representation of the trademark had some distinctive characteristics: contrary to the German grammar rules, it started with a non-capital “k”. The blue colour, the arrangement of the letters that form a square symmetrical effect, the non standard typeface, made appear the sign more a logo than a word.
The above mentioned reasons were sufficient to the Board to consider “KIEL” as a trademark, and not as a geographical reference, and to reject the appeal.
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