This article first appeared on WTR Daily, part of World Trademark Review, in (October/2015). For further information, please go to www.worldtrademarkreview.com
In Ecolab USA Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-610/13), the General Court (First Chamber) has upheld a decision of the Second Board of Appeal of OHIM finding that the mark GREASECUTTER was descriptive and lacked distinctive character for goods in Classes 3 and 5 of the Nice Classification pursuant to Articles 7(1)(b) and (c) of the Community Trademark Regulation (207/2009).
On November 17 2011 Ecolab Deutschland GmbH (which was succeeded by Ecolab USA Inc) obtained from the World Intellectual Property Organisation an international registration for GREASECUTTER designating the European Union for goods in Classes 3 and 5.
On February 2 2012 OHIM refused protection in the European Union, arguing that the mark lacked distinctive character and was descriptive for the goods concerned. Ecolab appealed.
Although the Board of Appeal allowed registration for some goods (ie, dentifrices in Class 3 and herbicides in Class 5), it maintained the refusal with respect to the other goods. On appeal, the General Court upheld the board’s decision and dismissed the action.
First, the court rejected the argument that the word ‘greasecutter’ cannot be found in English dictionaries, stating that:
“[…] although the term ‘greasecutter’ does not exist per se in English or other languages of the EU member states – as pointed out by the applicant – it is a neologism […] being composed of English words which are easily identifiable by the English-speaking public, especially since they form a comprehensible expression obeying English grammatical rules, one which is not unusual in Englishlanguage structure.”
In addition, the court reiterated the rule as to when a neologism may be allowed, stating:
“for a… neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation 207/2009, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so. A trademark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts.”
Finally, the court rejected Ecolab’s argument that a similar trademark (GREASECUTTER PLUS in Class 3) had been allowed by the United States Patent and Trademark Office. In this regard, the court was firm, saying that:
“[…] it must be remembered that the Community trademark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. […] OHIM, and, as the case may be, the Courts of the European Union are accordingly not bound by a decision given in a member state, or in a third country, that the sign in question is registrable as a national mark. Registrations already made in the member states or in third countries are therefore a factor which may only be taken into consideration, without being given
The court further argued that ‘OHIM is under a duty to exercise its powers in accordance with the general principles of EU law [and]… the way in which those principles are applied must be consistent with respect for legality.”
In summary, OHIM cannot rely on decisions from other jurisdictions. In particular, not only are decisions from IP offices in the member states irrelevant (despite them being part of the EU system), OHIM must also disregard any decisions from non-European jurisdictions, such as the United States in the present case.