In the recent case Eurohypo AG v OHIM (Case C-304/06P), the ECJ handed down a decision pointing out that the grounds of refusal in Article 7(1)(b), (c) & (d) of the Community Trade Mark Regulation (CTMR) each have separate public interests underlying them. The decision also emphasised the need to consider the correct public interest when making decisions based on these grounds. Article 7(1)(b) prevents the registration of marks which are devoid of any distinctive character, whilst Article 7(1)(c) prevents the registration of marks which are descriptive of characteristics of the goods or services in relation to which registration is sought. Article 7(1)(d) prevents the registration of generic marks.
Eurohypo AG applied to register the word mark EUROHYPO as a Community Trade Mark for various services in class 36. The application was rejected by the OHIM Examiner pursuant to Article 7(1)(b) and (c) (and also pursuant Article 7(2) of the CTMR which allow for a Community Trade Mark application to be refused even if the grounds of non-registrability only apply to part of the Community). Europhypo appealed against this decision. The appeal was successful in relation to a small range of services but otherwise unsuccessful. The Board of Appeal was of the view that the components EURO and HYPO contained a clearly understandable indication of the characteristics of some of the services covered by the application (i.e. the services in relation to which the appeal failed). They found that the combination of the two components in one word did not render the mark less descriptive and thus held that the mark EUROHYPO was descriptive of the services in question and thus devoid of any distinctive character in relation to those services, at least in German-speaking countries. Eurohypo unsuccessfully appealed to the CFI, and then appealed the CFI decision to the ECJ.
Eurohypo argued that the CFI had erred in its interpretation of Article 7(1)(b). There were three strands to this argument:
- The CFI failed to take into account the overall impression produced by the EUROHYPO mark;
- The CFI incorrectly interpreted the criteria for refusal of registration set out in Article 7(1)(b) & (c) of the CTMR;
- The CFI incorrectly applied the principles set out in the BABY DRY case.
In relation to the first point, the ECJ pointed out that the assessment of the distinctive character of a compound mark cannot be limited to an evaluation of each of the components considered in isolation but must be based on the overall perception of that mark by the relevant public. The assessment must not be based on a presumption that elements which are individually devoid of distinctive character cannot, on being combined, have a distinctive character. The ECJ reiterated the point made in BioID v OHIM that “the mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character”. It was found that the CFI had adequately considered the overall impression of the mark in the present case and had not limited itself to considering the individual elements in isolation. Therefore, this argument failed.
The main point of interest in this case lies in the ECJ’s comments in relation to the argument that the CFI incorrectly interpreted the criteria for refusal of registration set out in Article 7(1)(b) & (c) of the CTMR. Eurohypo argued that the CFI applied criteria relevant to Article 7(1)(c) only when reaching its decision on the basis of Article 7(1)(b). The CFI held that a compound mark which is composed of descriptive elements can be registered where the word in question has become part of everyday language and has acquired a meaning of its own. However, Eurohypo pointed out that this test is relevant only when considering a case under Article 7(1)(c), whereas the CFI based its decision on Article 7(1)(b) only. They argued that even though there is an overlap between the scope of Article 7(1)(b) & (c), the two grounds still have to be considered separately in light of the different general interest objective pursued by each of the provisions.
The ECJ pointed out that although there is a degree of overlap between the scope of the grounds in Article 7(1)(b), (c) & (d) it is still the case that each of the grounds is independent of the others and thus requires separate examination. They pointed out that the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. They held that the reasoning of the CFI in the present case was flawed as they had assessed the distinctive character of the mark EUROHYPO by carrying out an analysis of its descriptive character within the meaning of Article 7(1)(c) and not separate examination of Article 7(1)(b), which was the basis on which they refused the appeal.
The CFI had therefore assessed the mark without taking into account the public interest which Article 7(1)(b) aims to specifically protect – namely, to guarantee the identity of the origin of the designated product or service. The CFI had used an incorrect criterion to determine whether the mark could be registered. They said that a mark composed of descriptive elements could meet the conditions for registration where the word has become a part of everyday language and has acquired a meaning of its own. Whilst that criterion is relevant in the context of Article 7(1)(c), it cannot form a basis for the interpretation of Article 7(1)(b).
Therefore, the appeal succeeded on the second point outlined above (the third point was not considered). In light of the fact that it was found that the CFI had erred, and its judgment was set aside in as much as it held that refusing to register the mark EUROHYPO did not infringe Article 7(1)(b), the ECJ gave final judgment on this point.
The ECJ held that the relevant public in the field covered by the application would understand the mark EUROHYPO as referring, as a whole and in general, to financial services requiring real securities and, in particular, to mortgage loans paid in the currency of the European Economic and Monetary Union. They stated that there was no additional element which would allow the view to be reached that the combination created by the current and usual components EURO and HYPO is unusual or might have its own meaning which , in the perception of the relevant public, distinguishes the services offered by the appellant from those of a different commercial origin. Therefore, it was felt that the relevant public perceives the mark as providing details of the types of services which it designates and not as indicating the origin of those services. Therefore, the mark was found not to have distinctive character under Article 7(1)(b).
Whilst the final result was the same in that the mark EUROHYPO was found not to be registrable pursuant to Article 7(1)(b) this case illustrates the importance ensuring clear reasoning and consideration of the correct public interest objectives in raising objections under Articles 7(1)(b), (c) & (d).