Jan 20, 2016

CTM Oppositions and Descriptive Words


On 16 August 2010, Kraft Foods Global Brands LLC, now Intercontinental Great Brands LLC ("Kraft"), filed an application for registration of a Community Trade Mark ("CTM") at OHIM. The mark it sought registration of was the word mark 'TRIDENT PURE'.

On 22 December 2010, Perfetti Van Melle Benelux BV ("PVMB"), filed a notice of opposition. The opposition was based on earlier marks that it had registered. On 10 February 2012 the opposition was upheld on the ground that there was a likelihood of confusion.

On 5 April 2012 Kraft filed a notice of appeal at OHIM. On the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Fourth Board of Appeal of OHIM upheld the appeal and annulled the previous decision.

Present Action

In Case T‑491/13, the General Court dismissed PVMB's appeal commenting that registered CTM's which contain a descriptive word cannot easily be enforced as prior rights, even where it has a distinctive element.

Use of the word 'Pure'

The Board of Appeal found that the word element of the trade mark 'pure' featuring in all the marks at issue was perceived by part of the relevant public. This was, in particular, by consumers in English, French, Italian, German, Dutch and so forth. This was held as being a reference to the freshness or purity of the goods being offered for sale and therefore a mere description of those goods as a trade mark.

OHIM noted that the word suggests that the products are fresh, naturally sourced or healthy. This applies to any product that is characterised by a certain flavour or taste. The CTM in dispute was used on mints, and the term 'pure' refers to the lack of artificial additives or colourings, to fresh breath and to the purity of those sweets with mint flavour alone, distinct, in comparison to a mint with lemon flavoured sweet.

PVMB acknowledged that it created brands using the element 'pure' as that term conveyed the freshness and simplicity of the mint. For consumers who do not understand the meaning of the word 'pure' it has an average level of distinctiveness.

Use of the word 'Trident'

The element 'trident' is more distinctive for consumers who understand the word 'pure'. For those who do not, they are both equally distinctive, the latter one nevertheless being dominant because of its initial position in the mark applied for. However, the goods are identical.

PVMB was unable to provide evidence proving that the brand 'MENTOS' was widely recognised by consumers. On the other hand, a widely-known word element incorporated in a composite mark is particularly appropriate for indicating the commercial origin of the goods sold under that mark, for which reason it is not appropriate to regard such an element as insignificant.

in: News, Passing Off, Trade Marks

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