In Weber-Stephen Products LLC v EUIPO the General Court (GC) rejected an EUTM application for 'iGrill' in class 9 for computer software, hardware and electronic food thermometers. The mark was held descriptive of the goods, as the 'i' denoted 'intelligent' or 'interactive'.
Whilst from an EU perspective the decision is not particularly surprising, it highlights discussion around the descriptiveness of 'i'-prefixed marks, as well as descriptiveness more generally. Absent any EUIPO practice note it also clarifies the law in relation to such marks, which is helpful given the tech-savvy times we are in. Ironically, the iPhone and iPad devices that underpin the iGrill technology were registered per se around 10 years ago. Weber filed evidence of previously registered 'i' marks in the technology sector but the GC said the EUIPO Board of Appeal had not erred in dismissing these given the factual circumstances of the case.
The specification filed was based on a US mark and included informative, killer descriptions. The Board of Appeal said the specification explained perfectly how software, hardware and food thermometers are used for grilling with modern information technology. However, even disregarding the informative qualification the inclusion of 'computer software, computer hardware and electronic food thermometers...' would have been problematic because of the close conceptual link with iGrill.
For a sign to be descriptive under EU law there must be a sufficiently direct and specific relationship between the sign and the goods, for the public to immediately perceive a description of the goods. In accordance with the routinely cited DOUBLEMINT decision (OHIM v Wrigley, Case C-191/01 P) a word must be refused registration if 'at least one of its possible meanings' designates a characteristic of the goods. Weber argued that there was no link between grills and the goods. Grills did not have an IT interface and could not be remotely controlled by a computer or software. It also argued a 'thermometer' could not be called 'intelligent'. The GC rightly disagreed, saying that the goods have the characteristic of making grills intelligent by enabling them to access information technology to assist users.
The increasing use of smart technologies in the home would also have compounded the problem with the specification. Such interaction is an all too familiar way of life and terms such as 'interactive' or 'intelligent' are commonly understood in relation to use of technology.
Interestingly, Weber re-applied for iGrill as a EUTM for a slightly revised class 9 specification which still includes 'computer software', 'computer hardware' and 'electronic thermometers'. This has also been rejected on the same grounds and is currently with the GC on another appeal. It is thought the same decision is likely to be reached.
This article originally appeared in CITMA review.
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