A common problem
It was an error not to consider distinctiveness in relation to goods and services, Catherine Byfield explains. C-437/15 P, EUIPO v Deluxe Laboratories, Inc and Deluxe Entertainment Services Group, Inc, 25th January 2017.
C-437/15 P, EUIPO v Deluxe Laboratories, Inc and Deluxe Entertainment Services Group, Inc, 25th January 2017
Key points
- The presence of a figurative element meant that more consideration in relation to distinctive character was required
- Analysis should be conducted in relation to the qualities of the goods and services, not the mark in relation to the relevant public
In this opinion, the Advocate General (AG) recommended that the CJEU dismiss an appeal by EUIPO against a decision of the General Court (GC) where EUIPO was held to have erred in law when assessing whether a figurative mark (the Mark) containing the word “deluxe” was non-distinctive.
The application was refused in respect of a range of goods and services in eight classes, each broadly related to films. The Examiner and the Board of Appeal (BoA) held that the Mark lacked distinctive character for all of the goods and services. On appeal to the GC, it was held that the BoA failed to conduct the prescribed examination of the distinctive character in relation to all of the goods and services, or at least in relation to the categories they might constitute.
GC appeal
Aside from the distinctiveness of “deluxe”, the appeal raised the important question: does EUIPO have the right not to conduct a detailed analysis of the relationship between the mark applied for and the relevant goods and services?
The BoA found that the Mark would be viewed by consumers as a commonplace promotional tag, consisting of a “claim of superior quality”. Further, the term “deluxe” fell within the category of terms that must be exempt from trade mark monopoly, and the device element was insufficient to confer distinctive character. The GC criticised the BoA for failing to refer to each of the goods and services in question when examining distinctiveness: the BoA was incorrect to apply general reasoning without finding a sufficiently direct link so as to form a uniform category.
EUIPO submitted that the GC erred in law when it sought to limit the Office’s right to provide a general statement of reasons. EUIPO also put forward a broad definition of uniformity: a common feature between goods and services should be sufficient, even if they fall within different sectors.
AG answers
The AG agreed with EUIPO that, if it establishes a complete lack of distinctive character in a mark, generally applicable to all types of goods and services, there is no point conducting an assessment in relation to individual terms. However, it was wrong to apply that principle here. The figurative element means more consideration is required. The qualities that would generally be attributed to the word “deluxe” may be attributed to certain goods and services, but not to others.
It was not established that the Mark was completely devoid of distinctive character in relation to all goods and services; therefore, the appeal had to fail.
The AG held that it was necessary to identify intrinsic elements and links that group the goods and services into categories. The categories should then be compared with the sign. If a common element is identified, giving a degree of uniformity, then a general assessment of the distinctive character can be made in relation to the category. The analysis should be conducted in relation to the qualities of the goods and services, not the mark in relation to the relevant public.
This opinion makes a lot of sense, and clearer decisions with a transparent reasoning provided can only be good for applicants.
Catherine Byfield is a Chartered Trade Mark Attorney at Bristows LLP