'HOT' Stuff - Descriptive and Laudatory Trademarks v Fair Trade
Can descriptive or laudatory marks be protected as trademarks? In a recent development, Case T-611/13 Australian Gold LLC Management & Holding GmbH, ("Australian Gold") seems to have provided both clarity and uncertainty in this ever-evolving area of law.
General Rule
The general rule is that descriptive marks cannot be registered as trademarks on the basis that they are unlikely to be distinctive. Further, in the 'Doublemint' case (Office for Harmonisation in the Internal Market v WM Wrigley Jr Company, Case C-191/01), the CJEU stated of a mark that if "one of its possible meanings" was descriptive of the goods or services, whether or not it is actually in use, a sign shall not be registered.
To be registrable as a trademark, a mark must also be sufficiently distinctive.
Case T-611/13 Australian Gold LLC Management & Holding GmbH
In the present case the General Court ("GC") had to grapple with the general rule in relation to the word mark 'HOT'. OHIM initially granted protection to the figurative mark 'HOT' but Australian Gold challenged the mark's validity, particularly in relation to cosmetics and sanitary products.
The GC held that 'HOT' was purely descriptive in relation to "massage oils, gels" (Class 3) and "lubricant for pharmaceutical use" (Class 5), because these goods were intended to be applied in such a way as to create a sensation of heat. However, the GC also found that 'HOT' was not descriptive in relation to "washing and bleaching preparations; soaps" (Class 3) or "food supplements for medicinal purposes" (Class 5); 'HOT' was not descriptive of the temperature of the goods themselves, nor an appropriate temperature for their use.
Additionally, the mark was considered sufficiently distinctive for trademark protection; 'HOT' was not an exclusively laudatory term because it has other connotation, such as 'spicy', which lacked a laudatory character.
The decision of the GC suggests that a laudatory mark can be registered as trademark if at least one of its meanings is not exclusively laudatory. The case highlights the difficulty of registering any mark which may be considered descriptive. Any registrant applying to register what may be categorised as a descriptive mark of some products and services but not in respect of others should be aware that there is a risk that its validity will be challenged in the future.
It is possible that with the increasing importance and value delivered by branding, there is a requirement for flexibility of the law surrounding, and limiting, trademark protection. However, such flexibility carries uncertainty as to which side of the fence (registrable or non-registrable) descriptive or laudatory trademarks will fall. Recent cases on the subject, as set out in a table on the Marques blog, make it a real tightrope for practitioners. See, for example:
'SPLENDID' - devoid of distinctive character for several classes of goods in Class 18: 'Backpacks; book bags; sports bags; wallets; handbags; purses; tote bags; umbrellas; brief-case type portfolios; toiletry bags sold empty; cosmetic bags sold empty; shaving kit bags, sold empty; attaché cases; briefcases; satchels; duffel bags; luggage; garment bags for travel; billfolds; tie cases; key cases; diaper bags; shoulder belts; covers for electronic devices' - Case T-203/14 Mo Industries v OHIM (Splendid)
'FUN' - registrable in Class 12: 'land motor vehicles and parts and fittings thereof' Case T-67/07 - Ford Motor v OHMI (FUN)
'EXTRA' - Volkswagen AG failed to register the word as it was held to be devoid of distinctive character for several goods and services relating to vehicles in Classes 12, 28, 35 and 37 Case T-216/14 - Volkswagen v OHIM (EXTRA)