FRIDAY, 1 DECEMBER 2017
Update on the fate of laudatory signs before the General Court
The General Court (GC) recently handed down its judgment in Case T-31/16 adp Gauselmann v EUIPO, deciding on whether the word sign "Juwel" could be registered as a trade mark for goods and services in Classes 9, 28 and 41, including "games", "computer games", "coin-operated slot machines" and "games for amusement arcades". As will be explained below, this is a good opportunity to provide readers with an update on the fate of laudatory signs before the General Court (see the initial post on Case T-611/13 regarding the figurative mark "HOT").
In 2014, the examiner rejected the application for the mark "Juwel" on the basis that it lacked distinctive character and was purely descriptive, contrary to Article 7(1)(b) and (c) EUTM Regulation. "Juwel" (which is the German word for "jewel") would allegedly be perceived by the average consumer as a laudatory term. In 2015, the First Board of Appeal (BoA) dismissed the applicant's appeal.
The GC agreed with the BoA's view that "Juwel" was devoid of distinctive character for the goods and services in question. According to the GC, the BoA was correct in finding that the goods and services were targeted at a specialised public consisting of producers of coin operated machines and providers of online / video games. While this finding might surprise some of our readers who thought that "games" and "computer games" were targeted mainly at children or adolescents, it was not contested by the applicant.
Referring to the Duden dictionary, the Court stated that the German word "Juwel" could have two different meanings, depending on the gender and the article used. The term "der Juwel" (masculine noun) referred to a "precious stone" or an "ornament", whereas "das Juwel" (neuter noun) referred to a "thing that is highly valued by someone". After giving the matter some thought, this Blogger has decided to resist the temptation of making a joke at the expense of the German language and its (lacking) reputation for being enjoyable to learn.
However that may be, the Court held that the relevant German speaking public would immediately understand the term "Juwel" as a laudatory message indicating that the goods and services in question were of particular value (i.e., a "thing that is highly valued by someone"). In this context, the Court made reference to the doctrine established by the CJEU in Doublemint, namely that it suffices for a refusal of a trade mark if at least one of its possible meanings is descriptive of the relevant goods and services (see Case C-191/01 P).
Going one step
The GC did not consider in detail the applicant's argument that there were comparable trade marks already on the register of the EUIPO. For good reasons, this broad approach has repeatedly been subject to criticism on Class 46 (see here and here), but it is in line with the established case law of the CJEU (see, for instance, Case C-51/10 P, para.75-77).
The BoA had additionally invoked Article 7(1)(c) EUTM Regulation, claiming that consumers might also understand "Juwel" as a reference to "jewel games", which were a popular type of computer game. In accordance with the wording of the EUTM Regulation and the leading case law, the GC briefly stated that it was not necessary to examine whether the mark also fell foul of the requirements laid down in that provision, since it had already been found to be devoid of distinctive character.
As mentioned in the introduction of this post, the present judgment can be viewed as continuing a string of decisions concerning the registrability of more or less laudatory terms. In these decisions, the General Court has faced the difficult, yet necessary task of drawing the line between (non-distinctive) purely laudatory terms and sufficiently ambiguous (distinctive) marks. The problem for trade mark practitioners is that it can be challenging to predict in advance where this line will be drawn by the EUIPO and the courts.
In the words of the EUIPO, it is important "to distinguish laudatory terms that describe — although in general terms — desirable characteristics of goods and services as being cheap, convenient, of high quality, etc. and which are excluded from registration, from those terms that are laudatory in a broader sense, that is to say, they refer to vague positive connotations or to the person of the purchaser or producer of the goods without specifically referring to the goods and services themselves" (Examination Guidelines, Part B, Section 4, Chapter 4, p. 7).
The following collection is an updated version of the list included in the initial Class 46 post on this topic two years ago. Readers who have meanwhile been able to spot a reliable pattern within these decisions are invited to leave their comments below:
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