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CASE COMMENT Nick Boydell Golden Toast eV filed a Community Trade Mark application for registration of the word mark Golden Toast in relation to, amongst others, goods in class 11 for electrical household goods and baking machines and goods in class 30 including bread and other bakery goods, in particular for toasting or self baking. The application was partially rejected by the Examiner in relation to the goods specified above under Articles 7(1) (b) and (c) and 7(2) of Council Regulation (EC) 207/2009 (formerly Council Regulation (EC) 40/94) on the grounds that the mark was descriptive and lacked distinctive character in relation to those goods. This decision was approved by the OHIM Board of Appeal. In particular, the BoA found that the relevant public would consider the mark to mean that the relevant goods were designed for toasting and the end product would be “golden”, ie perfectly browned. Appeal to the GC Golden Toast eV put the following arguments to the GC: CASE COMMENT Golden Toast registration goes up in smoke after ‘descriptive’ decision Arbeitsgemeinschaft Golden Toast eV v OHIM, GC T-163/08, 19 May 2010. Review based on German-language judgment. The General Court recently rejected an appeal by Arbeitsgemeinschaft Golden Toast eV against OHIM’s partial refusal to register the word mark Golden Toast on the ground that it was descriptive. Nick Boydell reports... The BoA had given no reason for its finding that the mark lacked distinctive character; The BoA had not tested whether the mark is in fact descriptive. In reality the phrase “golden toast” was not used in a descriptive manner. The results of an internet search were submitted in support of this. The fact that each element of the mark could be seen as descriptive did not mean that the mark was descriptive as a whole. The relevant public would not see a link between the element “Golden” and the goods. In particular, the goods as sold were raw and Golden Toast eV disputed the relevancy of the Board of Appeal’s assumption that the relevant public would wish their baking machines to bake bread that was “golden”. The mark had been registered in Germany and has been used in that jurisdiction for 45 years. For the German public, the mark was not descriptive and was an adequate guarantee of origin of the goods. The GC’s findings The GC upheld the BoA’s finding that the relevant public was the general normally informed and rational consumers of the European Union. This was not disputed by Golden Toast eV. The GC found that Golden Toast eV had not successfully shown that the BoA had made a mistake in law in finding that the mark was descriptive. The GC found that both an Englishspeaking and a German-speaking public would understand “golden” to be a way of describing toasted bakery goods that are perfectly browned. The element “golden” was thus an aspirational description of the relevant goods, including both bakery goods and baking machines. The submission that the bakery goods were sold raw did not change this conclusion as the goods were intended for toasting. In addition, Golden Toast eV did not dispute the finding of descriptiveness in relation to the element “Toast”. It thus followed that both elements of the mark were descriptive. However, the GC stated that showing that each 18 ITMA Review July/August 2010
of the elements of a mark is descriptive is not enough to show descriptiveness of the whole mark. The court referred to its previous decision in Case T-343/07, allsafe Jungfalk v OHIM [ALLSAFE]. In that case the CFI found that when all the elements of a single word mark are descriptive, the mark will be descriptive itself unless the combination of the elements gives a different impression to the mere sum of its parts – for example, where the combination is particularly unusual in relation to the relevant goods and services. The GC did not find that the mark combined the elements in such an unusual way to give a different impression than the mere sum of its parts. In relation to Golden Toast eV’s submission that the phrase “golden toast” was not in fact used for descriptive purposes, the court stated that it is not necessary for a finding of descriptiveness that the mark is as a matter of fact being used to describe the relevant goods and services. The only requirement is one of the possible meanings of a mark is descriptive (Case C-191/01 P, OHIM v Wrigley). The internet search results submitted by Golden Toast eV could thus not have any influence on the court’s findings. Furthermore, the assertion that there was no need to hold the phrase “golden toast” free for the trade was not relevant to the consideration of descriptiveness. If the grounds of non-registrability only apply in one part of the European Union, a Community trade mark cannot be registered (Article 7(2) CTM Regulation). Thus the fact that the mark had been used in Germany and Golden Toast eV’s submission that the mark had thus lost its descriptive character in Germany could not affect the court’s findings in this case as the grounds still applied in other parts of the EU. Furthermore Golden Toast eV had not put any evidence forward to support any contention that the mark had acquired distinctiveness through use July/August 2010 CASE COMMENT and as such an argument had not been put forward before the BoA it could not be introduced at this stage. Thus the mark was descriptive of the real or desired characteristics of the relevant goods and Golden Toast eV’s appeal was thus dismissed. The finding of descriptiveness meant that it was not necessary to consider whether the mark had distinctive character. Comment This case is an example of where the court has found a combination mark descriptive by holding that its component elements are descriptive and that the combination itself does not give a different impression to the sum of its parts. Following ALLSAFE, the combination may have to be particularly unusual to be registrable and the court did not consider this to be the case for Golden Toast. The finding of descriptiveness in relation to untoasted bread products and baking machines demonstrates that the court will examine the potential use of the relevant goods and services when considering descriptiveness rather than simply considering whether the mark is descriptive in relation to the product as sold. This case is also a reminder that in order for an objection of descriptiveness to be overcome, it is not enough to submit evidence that, in fact, a mark is not being used for descriptive purposes. Instead, it should be shown that the mark is not capable of being descriptive in relation to any of its possible meanings. Finally this case is a reminder of the added challenge when registering a Community Trade Mark over national marks in that grounds of nonregistrability that apply in one part of the European Union will defeat an application despite long use and acquired distinctiveness in another part of the European Union. Nick Boydell, Solicitor, Bird & Bird LLP, nick.boydell@twobirds.com “This case is also a reminder that in order for an objection of descriptiveness to be overcome, it is not enough to submit evidence that, in fact, a mark is not being used for descriptive purposes. Instead, it should be shown that the mark is not capable of being descriptive in relation to any of its possible meanings.” ITMA Review 19
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