May 17, 2016

Sweet AROMA for Applicant in Trade Mark Appeal Decision

A decision of the EUIPO Board of Appeal has been declared invalid by the EU General Court in relation the word mark "AROMA".


Mr Peter Chung-Yuan Chang ("applicant") applied to WIPO for registration of the word mark AROMA.  Registration was granted on 21 November 2006 within the following NICE classes:

Class 7: 'Electrical cooking utensils, namely juicer, juice extractors, pasta makers for domestic use, food processors and blenders'; and

Class 11: 'Electrical cooking utensils, namely convention cooking ovens for domestic use, automatic bread makers for domestic use, food steamers for domestic use, grills, deep fryers, sandwich makers, waffle makers, soup warmers, rice cookers and warmers, food dehydrators, skillets, pressure cookers, hot plates, toaster ovens and roaster ovens, ice cream makers, and slow cookers'; of the Nice Classification.

Application for Declaration of Invalidity

Cancellation Division

The intervener, BSH Hausgeräte GmbH, applied for a declaration of invalidity under Article 52(1)(a) of the EUTMR, together with Article 7(1)(b) and (c) to the Cancellation Division.  The Cancellation Division rejected the application on the ground that the intervener had failed to show that the word mark AROMA was not descriptive of the intended purpose nor the characteristics of the goods at issue.

EUIPO Fourth Board of Appeal

The intervener appealed and the Fourth Board of Appeal allowed the appeal overturning the decision of the Cancellation Division.  It held that the sign AROMA was synonymous with 'smell, flavour, scent, perfume' especially in English, German, Spanish and Italian.

The Fourth Board's view was that the public would link the mark to be an essential characteristic or intended use of the goods in question within the prohibition in Article 7(1)(c) of Regulation 207/2009.

The Fourth Board also held that, in so far as the mark was a purely descriptive indication of the goods covered, it was, by virtue of that fact, also devoid of distinctive character within the meaning of Article 7(1)(b).

Finally, the Fourth Board found that the mark had not acquired distinctive character under Article 7(3) of that regulation, as the applicant had failed to show the use which had been made of it in Germany.

General Court (Ninth Chamber)

The matter then came before the Ninth Court of the General Chamber after the applicant appealed the Fourth Board's decision.

In respect of Article 7(1)(c) the General Chamber held that the Board of Appeal had erred in finding that the sign AROMA was descriptive of the goods at issue within the meaning of Article 7(1)(c) of Regulation No 207/2009.  The General Court held that AROMA  was synonymous with 'smell' but the goods in question did themselves not give off any smell, nor was their function to obtain food or drink with aroma. Rather, it was a desirable characteristic of food prepared or cooked with the help of those goods.  The sign AROMA does not refer to any direct characteristic of the goods at issue, but demonstrates, at most, an indirect connection with those goods. Agreeing with the applicant, the General Court held that the purpose of the goods was not to give aroma, but to cook or prepare food.

Accordingly the Fourth Board had been wrong to take the view that the sign contained clear and direct information on the qualities and characteristics of the goods. The indirect connection between the sign and the goods was evocative rather than descriptive, and fell outside Article 7(1)(c).

In relation to distinctive character under Article 7(1)(b) the EUIPO, submitted that AROMA is a purely informative indication, descriptive of a highly desirable characteristic of cooking appliances, something which, moreover, deprives it of any distinctive character.  The General Court considered that the overall concept of AROMA was not used solely for the goods and it was not devoid of distinctiveness just because the public might interpret it as a promotional and complimentary formula capable of being used by other undertaking. The mark could be seen as demonstrating a degree of originality.

This judgment can be accessed here: Peter Chung-Yuan Chang v EUIPO, Case T-749/14, 12 May 2016.

in: Case Law, News, Trade Marks

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