The General Court of the European Union denies registration of word mark ESPETEC as CTM
The General Court of the European Union (GCEU), in its recent judgment of September 13th 2012, case T-72/11 “ESPETEC”, confirmed the decision of the second Board of appeal of OHIM, according to which the registration of the word mark “espetec” for goods in class 29 was denied. In its decision, the GCEU stressed that the board of appeal of OHIM was right when refusing registration of word mark “espetec” as a CTM, as it incurred in the absolute grounds for refusal established in articles 7.1.b) and 7.1.c) Regulation 207/2009, on the Community Trademark (CTMR) Also, the CGEU considered that the registration of the word mark “espetec” is not acceptable under article 7.3 CTMR as distinctiveness did not derive from the documentation provided. On the contrary, Sogepi Consulting y Publicidad SL (applicant) claimed that registration of word mark “espetec” should be allowed since such term has at least 4 different meanings, being only one of them descriptive of the goods in class 29 for which protection was sought. In the understanding of the GCEU, such claim is invalid given that in order for the absolute ground to be applicable, it suffices that only one of the meanings be descriptive of the goods for which application was filed. Also, the CGEU points out that it is enough for the absolute ground to be applicable even if it is reasonably foreseeable that the term “espetec” will be descriptive of the goods covered in the application. It is interesting to point out that Sogepi Consulting y Publicidad SL claimed that art. 7.1.c) CTMR cannot be taken into consideration in the case at hand as “espetec” is a word in catalan, which is not an official language in the Union. Before such allegation, the CGEU concludes, after taking in consideration the relevant case law, that art. 7.2 CTMR must not be interpreted so restrictively as to understand it is only applicable when dealing exclusively with the area of a Member State. Therefore, the CGEU leaves the door open to the application of art. 7.1.c) CTMR for cases where there is distinctiveness of the trademark in question within the area of a Member State and also for a non-official Union language. Regarding art. 7.3 CTMR, OHIM claimed that given the fact that “espetec” is a descriptive word, it must be shown it has acquired distinctiveness through the use made of it, so that the applicable ground for refusal is overcome. Use of such term mark must be shown on its own, free from other elements (graphics, etc). Nevertheless, and contrary to what was stated by OHIM, the CGEU considers that secondary meaning may take place taking in consideration both, the use of the trademark on its own as well as the use of it with other elements. In the light of the documents provided by Sogepi Consulting y Publicidad SL, the CGEU concluded in its judgment that it had not been sufficiently proven that the term “espetec” has acquired sufficient secondary meaning as to make the public aware of the commercial origin of the goods for which protection was sought, one of trademarks threefold. In Salvador Ferrandis & Partners we believe the CGEU was right in its judgment when denying registration of word mark “espetec” as a CTM for goods in class 29, nevertheless and given the important conclusions and appreciations made in its judgment (such as that regarding art. 7.1.c) CTMR, it is to be seen how the Courts will interpret the controversies to come in the near future, despite the fact it looks the case law is rather consistent.
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