Intellectual Property Law: Community Trademarks – Registration – Grounds for Refusal

In CeWe Color AG and Co v. Office for Harmonization in the Internal Market (Trademarks and Designs) (T-178/03 and T-179/03), the Court of First Instance dismissed CeWe’s trademark applications on the grounds that the marks were merely descriptive and lacked distinctive character.

In 2001, CeWe applied for the registration of the Community Trademarks for the names DIGIFILM and DIGIFILMMAKER in Classes 9, 16 and 42 in respect of apparatus and automatic machines for recording data carriers, in particular apparatus for transferring digital data to data carriers. data.

The examiner rejected the applications in respect of classes 9 and 42 in accordance with Article 7(1)(b) and (c) of Council Regulation (EC) 40/94. The examiner concluded that:-

– the marks applied for were merely descriptive of the relevant goods and services; and

– the terms ‘Digi’, ‘Film’ and ‘Maker’ were not distinguished enough for registration.

CeWe appealed and the Appeals Chamber upheld the examiner’s decision. We further appeal to the Court of First Instance and affirm that:

Although the terms ‘digi’, ‘film’ and ‘maker’ are known to refer to ‘digital’, ‘film’ and ‘manufacturer’, respectively, the marks were not descriptive but rather technical terms that the public in generally understood;

the combination of the terms ‘digi’, ‘film’ and ‘maker’ was unique; and

although the trademarks for which registration was requested may appear on the Internet, they are not in the dictionary and are therefore registrable.

The Court of First Instance held that:-

the terms ‘digi’, ‘film’ and ‘maker’ in DigiFilm and DigiFlimMaker form combinations that can be disassociated and these juxtapositions are not unusual or striking;

The public would immediately understand that DigiFilm and DigiFlimMaker refer to the processing of digital data;

in the absence of any additional element, whether graphic or other distinctive element, the trademarks applied for lacked the distinctive character necessary for registration;

the terms DigiFilm and DigiFlimMaker would be perceived by the average consumer as merely descriptive terms for the goods and services they provide; and

ThisWe’s appeal would be rejected.

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© RT COOPERS, 2005. This Information Note does not provide a comprehensive or complete statement of the law relating to the subjects discussed nor does it constitute legal advice. Its sole purpose is to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.