Intellectual Residence Law: Community Trade Marks – Registration – Grounds for Refusal

In the case of CeWe Color AG and Co v Business office for Harmonisation in the Inner Market (Trade Marks and Styles) (T-178/03 and T-179/03), the Court docket of Initial Instance turned down CeWe’s trade mark purposes on the grounds that the marks had been just descriptive and lacked distinctiveness.

In 2001, CeWe applied for registration of the Neighborhood Trade Marks for the names DIGIFILM and DIGIFILMMAKER in Courses 9, 16 and 42 in regard of apparatus and automated devices for recording knowledge carriers, in specific apparatus for the transfer of electronic facts onto info carriers.

The examiner turned down the apps in regard of Classes 9 and 42 in accordance with Artwork 7(1)(b) and (c) of Council Regulation (EC) 40/94. The examiner concluded that:-
– the trade marks sought were simply just descriptive of the suitable goods and providers and
– the conditions ‘Digi’, ‘Film’ and ‘Maker’ did not have the adequate stage of distinctiveness for registration.

CeWe appealed and the Board of Charm upheld the examiner’s conclusion. CeWe even more appealed to the Court docket of 1st Occasion and contended that:-
even though the conditions ‘digi’, ‘film’ and ‘maker’ are known to refer in the English language to respectively ‘digital’, ‘film’ and ‘manufacturer’, the marks were not descriptive but had been relatively complex terms which the normal general public comprehended
the blend of the phrases ‘digi’, ‘film’ and ‘maker’ was special and
despite the fact that the marks for which registration was sought could look on the net, they are not stated in the dictionary and are thus capable of registration.

The Court docket of 1st Occasion held that:-
the phrases ‘digi’, ‘film’ and ‘maker’ in DigiFilm and DigiFlimMaker type combinations able of currently being dissociated and these juxtapositions are neither unconventional nor striking
DigiFilm and DigiFlimMaker would be understood quickly by the general public as referring to the processing of electronic data
in the absence of any additional component no matter if graphic or yet another unique aspect, the marks sought lacked the required distinctiveness for registration
the terms DigiFilm and DigiFlimMaker would be perceived by the common buyer as terms only descriptive of the goods and products and services they offer and
CeWe’s enchantment would be rejected.
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© RT COOPERS, 2005. This Briefing Notice does not give a in depth or entire statement of the law relating to the troubles discussed nor does it represent legal guidance. It is meant only to emphasize normal difficulties. Specialist authorized guidance need to normally be sought in relation to distinct situations.

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