Opposition proceedings in regards to a registered European Trademark. A General Court case analysis.
A brief description of the case
General Court (the Court) granted a judgement on the opposition to the registration of an EU trademark (EUTM) reiterating the previous decision of the Board of Appeal of EUIPO (BoA) that the word combination “LOVE TO LOUNGE” had been registered validly and is not merely a descriptive one but rather requires some degree of “intellectual effort” at the side of consumers.
The dispute arose between the two companies: Primark Holdings (an Irish company who in January 2010 on the basis of the Regulation No 207/2009 on the European Union trade mark (the Regulation) accomplished a registration of an EUTM “LOVE TO LOUNGE” for their “clothing, footwear and headgear”) and Lidl Stiftung & Co. KG, hereinafter “the Applicant”.
Lidl raised arguments related to the registration criterions namely of a EU trademark: 1) that “the contested mark is descriptive; 2) that the expression “Love to lounge” is too general in its nature, hence it is devoid of a distinctive character.
Case analysis by the General Court
The Court referred to the existing case law pointing out that “a sign can be refused registration on the basis of the provision of the Art. 7(1)(c) of the Regulation (absolute grounds for refusal) only if it is reasonable to believe that it will actually be recognized by consumers as a description of one of the characteristics of the goods”. In the case at hand the word combination “Love to lounge” couldn’t serve for that purpose.
The Court also stressed out on the necessity for the Applicant to submit the relevant evidence to substantiate its position in the case. Taking into consideration the fact that most of the evidence submitted by the Applicant were dated five years later than the registration of the EUTM or even without any date, the GC recognized them as inadmissible. The court wisely noted that “A period of around five years is sufficiently long for the perception of certain words to change according to new trends and cultural globalization”.
In addition, the Applicant tried to prove that the expression “Love to lounge” resembles in consumers’ minds as a piece of information and not the indication of commercial origin of the goods and, thus, devoted of any distinctive character. The Court expressly pointed out that “the contested mark conveys an abstract message referring to the interest of potential consumers in relaxing… and when the contested mark is used in relation to the goods in question, namely clothing, footwear and items of headgear, the relevant public will have to place that mark in a certain context, which requires an intellectual effort”. Such intellectual effort to link the slogan itself with a certain type of goods is crucial, in the Court’s opinion, to establish that the contested mark possesses a distinctive character.
The case at hand is a perfect reminder and warning for all who attempts to challenge the validity of a registered European Trademark on the grounds of its ambiguity or mere descriptiveness. Everyone who wants to do so, should understand the possibility of a twofold function of a trademark – both as a promotion formula and indication of a commercial origin of the product for which it is registered, as well as to be acquainted with the necessity to build his or her evidence base thoroughly.
The full text of the judicial decision in the case can be found on the official website of the Court of Justice of the European Union: https://curia.europa.eu/jcms/jcms/j_6/en/.
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