Lancôme parfums et beauté & Cie SNC v OHIM (2010) Case C-408/08 P
This was a final appeal before the Court of Justice of the European Communities (ECJ). The Appellant sought to overturn a decision by OHIM (the EU body responsible for the administration of trade marks) to revoke its Community Trade Mark registration for COLOR EDITION in respect of Class 3 (cosmetic and make-up preparations). The revocation was based on the following provision of EU law, which prohibits the registration of:
‘… 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.’
The trade mark COLOR EDITION had been found to be exclusively composed of words describing the characteristics of the goods for sale. Without more, such a device cannot function as a trade mark (an indicator of the business responsible for the good or service in question).
The Appellant raised two arguments before the ECJ. The first was that the original application made to OHIM for the mark to be declared invalid was not permitted by EU law. This, it was claimed, was because the application was made by a law firm in its own name (rather than in the name of a client). The Appellant argued that any party seeking the revocation of a registered trademark should do so on the basis that it has a direct or indirect economic interest in seeing the mark revoked. The interests protected by the ground for revocation of a descriptive trade mark are those of potential traders to use the same indication for their own goods or services. Consequently, it was argued, because the law firm was not a competitor of the Appellant, it had no right to make an application for revocation on that ground.
The Court rejected this argument. It found that the relevant provisions of EU law make no restriction on the type of legal person that may apply for revocation, provided that such persons have legal capacity under the law of their Member State (which the law firm did). The Court found that an applicant is not required to show any economic interest because the interest in seeing a descriptive mark revoked is a general one of the public as a whole. Descriptive signs or indications should be freely available for all to use and therefore, all should be able to prevent such a sign or indication from becoming a registered trademark.
The second argument raised by the Appellant was that even if the law firm did have the right to make the application for revocation in its own name, the revocation should nevertheless be overturned because the General Court (which initially upheld the revocation decision of OHIM) had applied the wrong criteria in assessing the application.
In particular, the Appellant argued that it was not enough to find that a trade mark is made up of descriptive elements. A fact finding exercise should also be carried out to compare the trade mark with the language used by everyday consumers to describe the goods or services in question. Only if the relevant trade mark is the same as such language should it be revoked.
The Court rejected this argument also. It found that the general rule in relation to descriptive trademarks is that a combination of descriptive elements is still descriptive (so combining ‘color’ and ‘edition’ would not, without more, make the mark COLOR EDITION descriptive). The only exception to this is where the mark communicates a distinctive message to the consumer, because of the unusual use of that combination in relation to the goods or services in question. It is necessary to consider this in light of the grammatical construction of the words. A factual comparison of the sort suggested by the Appellant is not required.
Applying that test to the present case, the court found that COLOR EDITION was a normal use of the rules of the English language and as such, the combination of the two words was nothing more than a descriptive phrase.
The appeal was dismissed.