ECJ: no automatically descriptive character in Unionmark with advertising message

ECJ and its today’s judgement: A common advertising message of a Unionmark establishes lack of distinctiveness. However, a descriptive character may not automatically be assumed in a trademark with an advertising message, but must be demonstrated.

The facts

Streitmarke achtung! — Unionmark in dispute

The European Patent and Trademark Office (EUIPO) rejected the application for the EU figurative mark ” achtung! ” for lack of distinctive character (with reference to Article 7(1)(b) and (2) of Regulation No 207/2009). ‘Achtung’ is a common German word in the meaning of ‘attention, ‘stop’ or ‘caution’, and also in the meaning of ‘respect’ and ‘appreciation’. The mark in dispute had been applied for in several classes of the Nice Classification, mainly in the field of goods and services for the PR and advertising industry, from communication services to domain and e-commerce services. Trade mark applicant is achtung! GmbH (Germany).

The appeal of the trademark applicant was rejected by the EUPIO Board of Appeal and in the next instance before the European Court (CFI, judgment EU:T:2019:2). Since the trademark applied for is perceived in the German-speaking world as a promotional advertising message and the trademark does not contain any figurative element that would enable it to be understood as an indication of commercial origin, the figurative sign lacks the necessary distinctive character.

The plaintiff achtung! appealed against this decision. GmbH and turned to the highest European Court of Justice (ECJ), which ruled in this case today.

The plaintiff argued that the court had wrongly considered only one of several meanings of the word respect in its judgement. In fact, the CFI had confined itself to the meaning “reputation or inscription to exhort caution or attention”. Furthermore, it had not sufficiently taken into account that the word “Achtung” is written in lower case in the trademark in dispute. Although upper and lower case letters have no relevance in a word mark, since the sign was applied for as a figurative mark, it must be evaluated as it was applied for, the applicant argued.

ECJ on distinctiveness: all uses of the mark to be examined

The distinctiveness, or rather the lack of distinctiveness, especially of marks with an implicit advertising message has ultimately been the subject of several cases before the European Courts (for example #bestdeal, we’re on it and SimplyConneted). An important ruling in this context is the #darferdas ruling, in which the ECJ decided last year that all types of use of a registered trademark must be examined – if their use is probable and customary in the industry.

achtung! – an eye catcher for attention

Also the ECJ itself referred to its judgement #darferdas and admitted that respect could also stand for “high esteem, appreciation, respect”. Moreover, the distinctiveness of a sign applied for as a trademark may not be assessed solely by taking into account its most likely use, but must be examined by taking into account all the likely ways in which the trademark applied for is used. However, in the present case, the exclamation mark – especially in orange – must also be taken into account.

With exclamation mark is Achtung! then nevertheless evenly then an eyecatcher for attention, the other meanings are practically not significant, judged the EuGH. Even the lower case of the letter “a” at the beginning of the word “Achtung” does not confer any distinctive character, the court added, “since it is a common spelling mistake in the German language”, as the ECJ originally reasoned.

EuG automatically assumed descriptive character

Nevertheless, the ECJ criticized the judgment of the CFI. The CFI had argued with descriptive character of the praising advertising statement, but had not examined and stated this assumed descriptive character, was criticised by the ECJ.

The ECJ had based its judgment on the fact that a sign is excluded from registration under Article 7(1)(b) of Regulation 2017/1001 on the ground that it lacks distinctive character – if at least one of its possible meanings designates a characteristic of the goods or services in question (i.e. must therefore be regarded as descriptive in accordance with Article 7(1)(a). (c) of Regulation No 207/2009). And indeed, signs with descriptive character always lack distinctiveness, the ECJ now confirmed. It is also correct that a sign is considered descriptive (within the meaning of Article 7(1)(c)) if at least one of its potential meanings designates a characteristic of the goods concerned.

But this case law to Art. 7(1)(b). (c) of Regulation No 207/2009 is applicable by analogy only in the context of Article 7(1)(b) of that regulation if the distinctive character of a trade mark application is called into question on account of its descriptive character, the ECJ held. In the present case, however, the descriptive character of the trademark application was neither demonstrated nor even examined, the ECJ criticized. The registration of the mark could not be rejected therefore with the reason ‘ descriptive character ‘.

ECJ: ordinary advertising message = devoid of distinctive character

However, the CFI had additionally given a further reason for refusing the mark and the lack of distinctive character, namely that the mark applied for would be perceived by the relevant public as a common advertising message and not as an indication of commercial origin. This rightly justifies the lack of distinctiveness, the ECJ explained. The error of law committed by the CFI thus has no effect on the tenor of the contested judgment, the ECJ ruled and confirmed that the CFI had given sufficient legal reasons for its conclusion that the trade mark applied for was devoid of distinctive character.

The action was therefore dismissed in its entirety. Trademark protection for the sign achtung! remains denied.