Volkswagen's 'Extra' Word Mark Rejected by the General Court

Volkswagen has failed in its bid to register the word "EXTRA" as a Community trade mark ("CTM") for certain goods and services relating to vehicles in Classes 12, 28, 35 and 37.

Decision of the General Court - T-216/14 - Volkswagen v OHIM (EXTRA)

Upholding previous OHIM decisions (Case R 1788/2013-1), the General Court found that the mark Volkswagen applied for was devoid of distinctive character. The term "extra" existed in several languages of the EU (meaning "additional" or "extraordinary") and would immediately be understood as indicating that the goods in question were of high quality. In addition, the General Court referred to its decision in BigXtra confirming that the term "extra" was commonly used in everyday language and in trade as a generic laudatory term. As a result, the term could not be regarded as appropriate for the purpose of distinguishing the concerned goods.

In an unsuccessful attempt to convince the General Court otherwise, Volkswagen made reference to an allegedly comparable word sign for automobiles which had been registered as a CTM without proof of acquired distinctiveness. In this regard, the General Court confirmed that the registrability of a sign had to be assessed solely on the basis of the facts of each individual case (see also T-106/14 - Universal Utility International v OHIM (Greenworld) on Class 46). Since the thorough assessment of the mark "EXTRA" could not result in any other decision, the General Court did not deem it necessary to consider the implications of the previous registration at all.

The mark that Volkswagen referred to was the popular car brand "SMART". It would have been interesting to hear the General Court's view on the potential differences between the words "extra" and "smart" as regards their inherent capacity to fulfill the essential function of a trade mark in connection to automobiles but unfortunately the General Court avoided the need to comment so.