1000: A round number, but still descriptive
Agencja Wydawnicza Technopol sp. z o.o. (Technopol), has lost its appeal to the Court of Justice of the European Union CJEU to register the mark '1000' [Case C-51/10 P] as a Community Trade (CTM) Mark in Class 16 for: "brochures, periodicals, including periodicals containing crossword puzzles and rebus puzzles, newspapers."
This case reinforces the need for a trade mark to have some distinctive character. Trade mark applications for numerals are acceptable however, they will be refused if one of the possible definitions could be seen to describe the goods or services. In this case, 1000 does not have sufficient distinctive character as it is a widely used round number and one of which that could be used to describe the applied for goods.
Initially, the mark was refused registration by the (spell out) (OHIM) on the basis of Article 7(1)(b) and (c) of CTM Regulation No 40/94 (the Regulation) on the grounds that the sign '1000' did not have any distinctive character and was descriptive. Following this refusal, Technopol unsuccessfully appealed to the Board of Appeal against the examiner's decision.
On 18 October 2006, Technopol unsuccessfully applied to the General Court for an annulment of the contested decision. The Polish publishers/printers of brochures and periodicals, amongst other things, submitted that where the sign '1000' is not coupled with a word, it is not descriptive. The General Court rejected this plea. According to settled case law, the sign is descriptive if there is a sufficiently direct and specific link between the sign and the goods and services in question to enable the relevant public to perceive, without further thought, a description of the goods or services in question, or of one of their essential characteristics.
The General Court held that '1000' alludes to a quality and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, the number of puzzles in a collection, or the ranking of items referred to in them.
The General Court reaffirmed the Board of Appeal's argument that brochures, periodicals and magazines frequently publish ranking lists and collections, with the preference being for round numbers in order to indicate content eg, 1000 questions and answers. Therefore, the sign is descriptive of the goods.
Technopol's argument that registration of the sign '1000' would not deprive third parties of the right to use that figure to designate quantities where such use does not constitute trademark infringement, was considered ineffective. Technopol incorrectly relied on Article 12(b) of the Regulation. The application of that Article presupposes the existence of a sign which has been registered as a trademark either because it has become distinctive through use, in accordance with Article 7(3) of the Regulation, or because of both descriptive and non-descriptive elements, which is not the case with this matter.
The General Court did not consider the appeal on distinctiveness, given that they had maintained the refusal on descriptiveness under Article 7(1)(c).
In the appeal to the CJEU Technopol relied on two grounds:
- The General Court infringed Article 7(1)(c) of the Regulation in that it didn't take into account all the relevant criteria for the application of that provision; and
- The General Court failed to take account of the OHIM's previous practice.
The publishing/printing company argued that the application of the ground for refusal set out in Article 7(1)(c) of the Regulation is subject not only to the 'normal usage' test referred to by the General Court, but also to the condition that the sign at issue must be no different from the usual way of designating the relevant goods or services concerned, or their characteristics. In addition, there are no findings in the judgment under appeal to the effect that use of the sign '1000' constitutes 'normal usage' to designate the goods for which registration was sought. The General Court's examples were related to the use of numerals together with terms, leading Technopol to argue that the General Court based its assessment on assumptions.
According to Technopol, the General Court failed to have regard to the relationship between Article 7(1)(c) of the Regulation and Article 12(b) of that regulation, and it wrongly restricted the scope of Article 12(b) of the Regulation to a case where a sign "has been registered as a trademark either because it has become distinctive through use, in accordance with Article 7(3) of the Regulation or because of the presence of both descriptive and non-descriptive elements."
Technopol also argued that the General Court did not address to the requisite legal standard the argument that the Board of Appeal had failed to have regard to the fact that there was no need for the sign '1000' to be available.
The CJEU found that the General Court had correctly held that the fact that a sign is composed exclusively of numerals is not enough in itself to prevent that sign from being registered as a trademark. Article 4 of the Regulation specifically stipulates that numerals are registerable.
The General Court also considered whether the finding was the result of an excessively broad and thus, incorrect, interpretation of Article 7(1)(c) of the Regulation and held that in order for the OHIM to refuse to register a sign on the basis of Article 7(1)(c) of the Regulation, it is not necessary that the sign in question actually be in use at the time of the application for registration in a descriptive manner. It is sufficient that a sign could be used for such purposes. It does not depend on there being a real, current or serious need to leave a sign or indication free and it is of no relevance to know the number of competitors who have an interest in using the sign.
Technopol argued that the General Court had erred in law, by stating that the sign '1000' could be descriptive. However, a sign can be refused registration on the basis of Article 7(1)(c) of the Regulation only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of 'one of those characteristics'. It is quite clear that at least one of the characteristics of the sign had a possible descriptive meaning with regard to the goods.
Therefore, it seems clear from this that where a numeral is to be used as a trademark, it should be a numeral that has no particular meaning with regard to the goods and/or services for it to be registerable.
What also proved quite detrimental to Technopol's case was the evidence the General Court found of numerous examples of goods on the market that use round numbers to provide information about the goods that are being sold.
It is important to note that the fact that the General Court applied Article 7(1)(c) of the Regulation to these circumstances does not mean that the provision was misinterpreted. Where an application for registration refers to a category of goods which can be defined by numerals, it is reasonable to believe that a sign such as this one will be recognised by the relevant class of persons as a description of that quality and therefore as a characteristic of those goods.
Technopol's argument that the General Court failed to have regard to the relationship between Article 7(1)(c) of the Regulation and Article 12(b) of the Regulation also failed. The CJEU found that the General Court correctly stated, Article 12(b) of the Regulation concerns the limits on the effects of a Community Trade Mark, whereas Article 7(1)(c) of the Regulation relates to the grounds for refusal to register signs as marks.
Technopol appear to have confused the meaning of Article 12(b) of the Regulation. Despite it stating that every trader may freely use indications relating to the characteristics of goods and services, it does not limit the scope of Article 7(1)(c) of the Regulation. On the contrary, it discloses the need for the ground of refusal set out in Article 7(1)(c) of the Regulation. Therefore, Technopol’s argument regarding the interplay between the two provisions was unfounded.
Finally, Technopol's argument that the General Court failed to take into account the OHIM's previous practice also failed. The Court of Justice rightly held that an application for registration of a Community Trade Mark must be examined on the basis of the rules in force at the time of examination and not on the basis of previous decision-making practice. This practice must be followed, otherwise, trademark law would be unable to evolve as it would be bound rigidly by previous practice. It is fair to say that there are numerous trademark registrations granted previously that would not qualify for registration under the current practice. It is also important to remember that each case turns on its own facts; the previous cases cited by Technopol concerned entirely different signs and goods and therefore were not relevant here.
The General Court was right to hold that where an application for registration refers to a category of goods of which can easily be described by the numeral indicating the number of units they contain. With goods such as puzzle books, it is perfectly reasonable to believe that the average consumer of the goods would recognise and assume that the figure related to a particular characteristic of the goods, particularly when we take into account that these types of goods often have a numeral in the title to indicate the content, such as: Wonderland 1000 Piece Jigsaw Puzzle Book, The Giant Book of Sudoku - 500 Puzzles etc. Therefore, Technopol should not be allowed to obtain a monopoly on the number 1000 for goods of this type.
With regard to Technopol's argument that the OHIM did not follow it's previous practice with regard to similar applications. It is well established that the OHIM must take into account the decisions already taken in respect of similar applications. However, in this case, the mark was clearly and correctly classified as descriptive of the goods in the application.
At its most basic, this decision emphasises the need for a trade mark to be distinctive to qualify for registration as a trade mark. Trade mark protection is a monopoly right and therefore, it will not be granted if the outcome is to prevent third parties from using marks which should be freely available to use.
In this case, the Court of Justice of the European Union emphasised that numerals are not precluded from registration unless they are or at least could be seen to be descriptive of the goods and/or services. The number 1000 could be used to describe many characteristics of the goods or could indicate a kind, quality or quantity and therefore no amount of arguments from Technopol would sway the Court of Justice's opinion otherwise. Whilst it could be argued that 1000 only alludes to a possible characteristic of the goods, unfortunately for Technopol this was sufficient to render the mark not registerable.
Brand owners need to ensure that, if their mark consists of numerals only, those numerals should not have any descriptive characteristics of the goods/services.
Written by Natalie Clare, a trade marks assistant in Fieldfisher Waterhoue's Trade Marks and Brand Protection Group and Mark Holah, head of Fieldfisher's Trade Marks and Brand Protection Group.