EU General court sides with EUIPO on refusing ‘iGrill’.
Written by Mark Reed on 23 October 2018« Return to Reading Room
In the first instance, the European Union Intellectual Property Office refused Weber-Stephen Products from registering the mark ‘iGrill’ in class 09 (for goods including computer hardware and software) and class 21 (for household, kitchen and barbeque utensils and containers). This was due to the fact that the new common use of putting an ‘i’ before a word such as in this case with grill would represent an interactive or intelligent grill.
Specifically, this was argued as suggesting that the goods in question could be used to operate a grill and so is descriptive of those goods. This meant that the application could be appealed but if rejected by the European General Court then the matter would be closed and the mark rejected.
US based Weber-Stephen Products took the gamble and decided to appeal the decision and so meant that they went up in front of the board and argued that the EUIPO board were wrong to try and say that the ‘relevant public would have a high level of attention with the goods at issue in class 09’. They also argued that the EUIPO board was wrong to focus on the ‘i’ by saying that ‘the ‘i’ element of the applied-for mark does not have any independent meaning and the mark is not descriptive as the goods at issue are not intelligent grills, nor do they use information technology.’
This point was noted by the EU General Court but found the goods to relate to software and hardware and electronic thermometers and that Weber-Stephen needed to have elaborated more on their reasoning behind their argument and how they didn’t relate to the tech sector. This caused the board to reject this line of argument from Weber. They went on to say that the mark must be considered as a whole which subsequently meant that consideration was only given to the mark ‘iGrill’. This also would mean that the mark suggests it is a “grill having the characteristic of being intelligent or of making use of IT. It should therefore be considered that, in one of the possible meanings, the mark applied for may designate a characteristic of all the goods at issue.”
Weber- Stephen tried to defend their point on intelligence by saying that the idea behind adding class 09 was not to allow the user to make use of the grill remotely (intelligently) and that it was the thermometers and utensils that fell within class 09. The final statement before the application was formally rejected from the court was that the computer software in class 09 may be required to operate a device, such as a grill, and make use of IT “without there being a need to determine whether or not that hardware must make it possible for grills to be used remotely” and so was ultimately descriptive of the goods as a whole.
The General Court dismissed Weber-Stephen’s appeal, and the company was ordered to pay the costs.
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