Lacking distinctive character
Written by Michael Coyle on 12 September 2015« Return to Reading Room
On 3 May 2012, the applicant, Goldcrest LLC, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark for the trade mark MIGHTY BRIGHT in respect of ‘Portable clip-on reading lights and light bulbs’.
The trade mark application was rejected under Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, Goldcrest filed a notice of appeal against that decision with OHIM on 2 November 2012.
The Second Board of Appeal of OHIM dismissed the appeal in its entirety.
It found that the English words ‘mighty’ and ‘bright’ meant ‘having or indicating might; powerful or strong’ and ‘emitting or reflecting much light; shining’ respectively and that they therefore informed consumers, without further reflection being required, that the reading lights and bulbs concerned were capable of emitting powerful, strong light, thus eclipsing any impression that the sign applied for could indicate a commercial origin.
Absolute grounds for refusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;
(f) trade marks which are contrary to public policy or to accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;
(h) trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the 'Paris Convention';
OJ 2009 L78/42009 · Official Journal of the European Union · L78/4
(i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;
(j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin;
(k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs 6 when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication.
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