Legal Updates

Intellectual Property: Community Trade Marks - Registration - Grounds for Refusal

In the case of CeWe Color AG and Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (T-178/03 and T-179/03), the Court of First Instance rejected CeWe's trade mark applications on the grounds that the marks were merely descriptive and lacked distinctiveness.

In 2001, CeWe applied for registration of the Community Trade Marks for the names DIGIFILM and DIGIFILMMAKER in Classes 9, 16 and 42 in respect of apparatus and automatic machines for recording data carriers, in particular apparatus for the transfer of digital data onto data carriers.

The examiner rejected the applications in respect of Classes 9 and 42 in accordance with Art 7(1)(b) and (c) of Council Regulation (EC) 40/94. The examiner concluded that:-
- the trade marks sought were simply descriptive of the relevant goods and services; and
- the terms 'Digi', 'Film' and 'Maker' did not have the sufficient level of distinctiveness for registration.
CeWe appealed and the Board of Appeal upheld the examiner's decision. CeWe further appealed to the Court of First Instance and contended that:-

• although the terms 'digi', 'film' and 'maker' are known to refer in the English language to respectively 'digital', 'film' and 'manufacturer', the marks were not descriptive but were rather technical terms which the general public understood;
• the combination of the terms 'digi', 'film' and 'maker' was unique; and
• although the marks for which registration was sought may appear on the internet, they are not listed in the dictionary and are therefore capable of registration.

The Court of First Instance held that:-

• the terms 'digi', 'film' and 'maker' in DigiFilm and DigiFlimMaker form combinations capable of being dissociated and these juxtapositions are neither unusual nor striking;
• DigiFilm and DigiFlimMaker would be understood immediately by the public as referring to the processing of digital data;
• in the absence of any additional element whether graphic or another distinctive feature, the marks sought lacked the necessary distinctiveness for registration;
• the terms DigiFilm and DigiFlimMaker would be perceived by the average consumer as terms simply descriptive of the goods and services they provide; and
• CeWe's appeal would be rejected.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.