Posts tagged Community Trade Marks

Intellectual Property Law: Community Trade Marks – Registration – Grounds for Refusal

Intellectual Property LawIn the event of CeWe Color AG and Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (T-178/03 and T-179/03), the Court of First Instance rejected CeWe’s logo applications on the grounds that the symbols were simply illustrative and lacked distinctiveness.

In 2001, CeWe applied for enrollment of the Community Trade Marks for DIGIFILMMAKER and the names DIGIFILM in Categories 9, 16 and 42 in respect of equipment and automatic machines for recording data carriers, particularly equipment for the transport of digital data onto data carriers.

The prosecutor rejected the applications in respect of Categories 9 and 42 in accordance with Art 7(1)(b) and (c) of Council Regulation (EC) 40/94. The prosecutor reasoned that :-
– the logos sought were merely illustrative of the related goods and services
– the terms ‘Digi’, ‘Picture’ and ‘Manufacturer’ didn’t possess the adequate degree of distinctiveness for enrollment.

CeWe appealed as well as the examiner’s conclusion was upheld by the Board of Appeal. CeWe argued that and additionally appealed to the Court of First Instance :-
Even though the terms ‘Digi’, ‘movie’ and ‘maker’ are known to refer in the English language to respectively ‘digital’, ‘movie’ and ‘producer’, the symbols weren’t illustrative but were fairly technical terms which the general people realized;
the combination of the terms ‘Digi’, ‘movie’ and ‘machine’ was exceptional; and
They aren’t recorded in the dictionary and are thus with the capacity of enrollment, even though the symbols for which registration was sought may appear on the web.