In a recent decision the General Court came to the interesting conclusion that a word of which the trademark consists shall not be deemed registrable, if it is descriptive and devoid of any distinctive character, although it is shown in a characteristic script form[1] as for instance in the following form:
There is no doubt that the word SPLENDID is a word of the general English language which for almost all products and services is to be considered as descriptive with a laudatory aspect and which, as such, also lacks distinctive character. However, there exist innumerable CTMs which also consists of words of the general language which can be used in connection with most goods and services or at least with the goods and services for which the trademark is registered and they have been registered in the past on the theory that the distinctive character of the trademark can be based on the specific presentation and in many cases on a specific handwriting and script form. It seems that this is not any longer true.
The General Court confirms specifically the Board of Appeal of the OHIM which held that "the typeface used, although stylized, cannot divert the consumer's attention from the clear message conveyed by the term 'SPLENDID'" (paragraph 24). The General Court added that the cursive script is an ordinary and traditional style which is used by both children and adults which remains unremarkable from the perspective of any consumer. If one pushes this argument further, this will come to the conclusion that any trademark in a specific form of handwriting, even quite specific and characteristic, will not be able to justify registration of the trademark.
The question arises in this connection, to what extend the General Court in the application procedure already sets the issues in a latter infringement action. Basically, the infringement court not having a trademark, because the characteristic handwriting has been considered as irrelevant, will have to disregard the fact that a similar trademark uses the same handwriting because the handwriting has been qualified as not distinctive. This seems to deviate from the general practice at least in several European countries.
An additional aspect in the case at hand was that the dot on the letter "I" in the trademark word SPLENDID is as such registered as a separate trademark, CTM No. 10504652 as follows:
This means that the dot alone which can be found in the trademark SPLENDID is a characteristic and distinctive trademark and the distinctiveness and descriptiveness of the word SPLENDID will remove this character from this trademark element and will not justify the registration of the word as a whole.
The decision discussed here also contains an interesting clarification made by the General Court pursuant to which any laudatory connotation of a word trademark does not mean necessarily that it cannot serve to guarantee the commercial origin of the goods or services which it covers. This means that even though the relevant public will recognize the trademark as having a laudatory meaning for the products or services involved, this does not necessarily mean that the trademark would not be capable to fulfil its function as guaranteeing the commercial origin of the products or services so labelled and, if the OHIM should take the position that the trademark is not capable to guarantee the commercial origin, a reference to the laudatory meaning of the trademark alone will not be enough.
It will be interesting to follow how far this approach will go in the end, because if one takes just the trademark word(s) and not the graphic presentation as long as it is easily readable for the average consumer, the absolute grounds of refusal of descriptiveness and lack of distinctiveness will apply in many cases where trademarks have been registered until now without any problems.
Footnote
[1] General Court of 21 May 2015, Case T-203/14
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