Date: 10 February 2010
In this case the General Court had to consider the legality of the decision of the Fourth Board of Appeal of OHIM which dismissed an appeal by the applicant, O2 GmbH & Co. OHG against the decision of the OHIM examiner rejecting O2's application for registration of "Homezone" as a Community Trade Mark in Classes 9, 38 and 42.
O2 had filed a Community Trade Mark application for "Homezone" for "Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; data processing equipment and computers" in Class 9, for "Telecommunications" and various communications services in Class 38 and for various technical computing and advisory services in Class 42.
The examiner had rejected the application under Article 7(1)(b) and (c) and Article 7(2) of the Regulation for the above goods and services and this decision was confirmed by the Fourth Board of Appeal.
The Board of Appeal dismissed O2's appeal on grounds that the mark "Homezone" consisted exclusively of indications which would serve in trade to designate characteristics of the goods and services under Article 7(1)(c) and that such a mark which designates characteristics of the goods and services in a directly obvious way, was inevitably devoid of distinctive character under Article 7(1)(b).
The General Court picked up on this latter point and in its judgement it stated "each of the grounds for refusal to register listed in Article 7(1) of Regulation No. 40/94 is independent of the others and calls for separate examination".
In its appeal to the General Court, O2 alleged that the decision of the Board of Appeal infringed Article 7(1)(c), Article 7(1)(b) and Article 7(3).
In assessing the grounds for refusal of the mark, the Court first considered Article 7(1)(c) and stated that a sign's distinctiveness needed to be assessed "first, by reference to the goods or services in respect of which registration is applied for and, second, by reference to the perception which the relevant public has of it".
The Court went on to define the relevant public and after defining the relevant public as English-speaking and German-speaking, it proceeded to analyse the likely meanings of the mark to the English and German speaking public as presented to the Board of Appeal.
The Court found that whilst the sign 'Homezone' is a neologism, the juxtaposition of the two words 'home' and 'zone' which form the neologism was not unusual and the sign, when taken as a whole, is not likely to create a different impression from that which is created by combining the meanings of the two words 'home' and 'zone'.
The Court emphasized that it did not matter that the sign had more than one meaning. It was sufficient for the purposes of refusal under Article 7(1)(c) that is has one descriptive meaning but (in accordance with STREAMSERVE) there had to be "a sufficiently direct and specific link to the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics".
In the present case, the Court held that the Board of Appeal had not erred in its assessment of the meaning of the sign 'Homezone' as a home area or local area ('Heimbereich' or 'Nahzone' in German), but it failed to demonstrate the direct and specific link between the meaning and the goods and services in question.
With regard to telecommunications services in Class 38, the Board of Appeal stated that the mark had been shown by internet examples to be in use descriptively to designate these services. However, the error made by the Board of Appeal here was merely to refer to the examples given by the examiner without describing the examples and explaining how they justified a finding that the trade mark 'Homezone' is descriptive of telecommunications services. Consequently, the Court upheld O2's plea as regards these services.
Interestingly, in reaching this finding, the Court criticized the OHIM examiner's reliance on information obtained from the Wikipedia website and stated that this information must be disregarded due to the fact that the Wikipedia encyclopaedia's content "lacked certainty" because it could be amended at any time and in some cases by any person viewing the website, and they may do so anonymously.
The Court went on to find that the Board of Appeal had erred in concluding that the trade mark 'Homezone' was descriptive of the other services in Class 38 as a result of a finding that these services were associated with telecommunications services. Since the Board of Appeal had not established that the mark 'Homezone' could designate telecommunications services or a characteristic thereof, it could not then reach the finding that the mark was also descriptive of other services in Class 38 on the basis that these services are associated with telecommunications services. The Board of Appeal had failed to establish a direct and specific link between the mark and the services. As a result of this, O2's plea was upheld with regard to the other services in Class 38.
The same finding was reached by the Court in relation to the goods in Class 9 and the services in Class 42. The Board of Appeal had described "a functional relationship" between the goods in Class 9 and a mobile telephone service in Class 38, i.e. goods being necessary to operate the service. For Class 42 , it stated that certain services including "computer programming" and "technical design and planning of telecommunications equipment" performed the function of making the mobile telephone service technology available. For other services in Class 42, including "network operator, information broker and provider services, namely arranging and leasing access time to computer databases" it stated these services were "necessary to collect and process the parameters of the service [i.e. the mobile telephone service]...and the customer data required for billing purposes". However, once again the Board of Appeal had failed to establish a direct and specific link that the relevant public could establish between the term 'Homezone' and the good and services in question. The Court therefore upheld O2's plea as regards the goods in Class 9 and the services in Class 42.
As regards the Article 7(1)(b) ground, the Court found that the Board of Appeal failed to consider the public interest associated with this ground - to guarantee the identity of origin of the goods and services designated by the mark and the plea alleging infringement of Article 7(1)(b) was also upheld.
It was not necessary for the Court to consider the Article 7(3) ground (whether the mark had acquired distinctiveness through use) since the mark had not been found to be non-distinctive/descriptive.
The Court annulled the decision of the Fourth Board of Appeal of OHIM.
This judgement is encouraging for applicants of word marks which are common words or combinations of common words which are borderline distinctive, but where it cannot be shown that there exists a direct and specific link to the goods/services for which registration is sought. Furthermore, the Court's criticism of the Board of Appeal's reliance on information taken from the Wikipedia website suggests that OHIM examiners will have to be more careful about where they source information to support their objections, particularly with regard to Internet resources such as online encyclopaedias.