Itemized Judgments

Branding case develops for FABTECH exhibitor

The EU General Court has said that graphic elements of a trademark do not “divert attention” from the descriptiveness of the mark.

The Sixth Chamber of the court delivered judgment yesterday, May 28 in an appeal brought by German company Item Industrietechnik. Headquartered in Germany, Item designs and sells construction machinery.

In May 2016, Item applied to register a figurative trademark with the European Union Intellectual Property Office (EUIPO). The mark featured the word ‘Efuse’ in stylised writing, and covered engines, driving instruments, and data processing instruments in classes 7 and 9.

An examiner at the EUIPO rejected the application, and the Fourth Board of Appeal partially upheld and partially annulled the rejection in April 2017.

The board upheld the decision in respect of class 7, as the word ‘fuse’ preceded by the letter ‘e’ would be understood as meaning ‘electronic fuse’.

Therefore, “the sign would be easily able to describe the goods covered”, the board said, as fuses represented a “substantial feature” of the goods in class 7 and of some of those in class 9. Electronic fuses are featured in goods such as engines, motors, and generators to control the electric current.

It also affirmed the examiner’s finding that the applied-for mark lacked distinctive character.

However, the board said that there was no clear link between the applied-for mark and the data processing goods included in class 9, so ‘Efuse’ is not descriptive in relation to those goods. The board annulled the examiner’s decision in relation to data processing goods in class 9.

Item appealed against the EUIPO’s decision to refuse registration of the mark for goods in class 7 and the remaining goods in class 9.

The construction company argued that the board wrongly found the applied-for mark to be descriptive, since ‘Efuse’ referred “at most” to something “embedded” in the goods covered rather than an “essential characteristic” of the goods.

Item also claimed that the board failed to account for the “particular and unusual graphic presentation” of the applied-for mark, which is “without any clear meaning”.

The court affirmed the EUIPO’s decision. It explained that a mark which “designates a characteristic of the goods or services” it covers cannot be registered and that the board correctly determined that the combination of ‘e’ and ‘fuse’ would be understood to mean ‘electronic fuse’.

“Any business must be able to freely use such signs or indications to describe any characteristic of its own products”, the court said, and any one business is therefore prevented from registering such a sign as a trademark.

The court added that the use of graphic elements in the applied-for mark does not change this fact, as it does not “divert attention from the descriptive message”.

The Sixth Chamber dismissed the appeal and ordered Item to pay costs.

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