Jugdement of the General Court on “3D eXam”: the extension of protection of international trademarks
In Salvador Ferrandis and Partners we recently came across a judgment of 29 March 2012, delivered by the Sixth Chamber of the General Court in Case T‑242/11, “3D eXam”, which deals, among other controversial points, with the extension of registration of international trademark “3D eXam” in the territory of the European Union (EU).
In the case, the applicant sought to extend the protection of the afore mentioned trademark to the territory of the European Union for goods in class 10 of the Nice Agreement, in particular ‘X-ray apparatus for dental purposes’ once it was granted international protection by virtue of a WIPO decision dating 22nd December 2008.
After the application for protection of the trademark “3D eXam” in the territory of the EU was rejected, the applicant lodged an appeal before the OHIM. Such an appeal was dismissed on the basis of articles 7(1)(b) and (c) and (2) Regulation 207/2009 on the Community trade mark. The examiner found the trademark “3D eXam” descriptive of the goods covered, X-ray apparatus for dental purposes, according to Article 7(1)(c) and devoid of distinctive character, as the relevant and targeted public (that is, the public in the medical field, particularly dentists) will envisage the trademark “3D eXam” as referring to an X-ray examination in three dimensions, taking into consideration Article 7(1)(b).
Regarding article 7(1)(c) the OHIM stressed that “indications or signs which are descriptive of the characteristics of the goods or services in respect of which registration is sought may be freely used by all”. Also, it was put forward that allowing registration of signs that may be used to designate characteristics of the goods or services for which registration is sought cannot develop the essential function of a trademark – e. i. identifying its commercial origin. Therefore, the applicant’s plea that the decision of denial of registration infringes article 7(1)(c) was rejected by the General Court
Regarding the claim put forward by the applicant that the confronted trademark is distinctive in the sense of article 7(1)(b) of the Regulation, the OHIM states that “a word mark, such as ‘3D eXam’ which is descriptive of characteristics of goods or services is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services”. By analogy, we can quote Judgement of 14 February 2004, C‑265/00, “Campina Melkunie”. Therefore, the General Court also rejected this plea.
As third plea, the applicant claimed that the OHIM failed to take into consideration the fact the trademark ‘3D eXam’ was granted protection in Germany, Japan and the United States, reason why it had to be granted protection in the territory of the EU. In this regard, the Board of Appeal stated that the Community trade mark regime is an “autonomous legal system” and therefore it must be applied independently from any other trademark legal system. Furthermore, account must be taken strictly to the relevant Community legislation when protection in the EU is sought, no matter where the trademark applied for has been granted protection. Accordingly, the judgment finishes by adding that “neither OHIM nor, as the case may be, the Courts of the European Union are bound by decisions adopted in a Member State, or a third country, finding a sign to be registrable as a national trade mark”.
For all the above, the Sixth Chamber of the General Court concluded the OHIM was right in rejecting to grant protection in the territory of the EU to the sign “3D eXam”.
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