BASF v Evonik: when abbreviations become descriptive
12 July 2017
BASF SE (BASF) owned a European Union Trade Mark (EUTM) registration for DINCH in respect of goods categorised as chemical products for plastics in class 1. It was filed in February 2002 and registered in March 2003.
In December 2012, Evonik Industries AG (Evonik) filed an invalidation action to the registration on the grounds DINCH was descriptive under Article 7(1)(c) EUTMR as DINCH was a common chemical acronym identifiable by the relevant public. The action was dismissed by the European Union Intellectual Property Office (EUIPO) Cancellation Division but Evonik appealed and the Board of Appeal upheld the appeal. BASF then appealed to the General Court (GC).
The GC rejected BASF’s appeal finding DINCH to be descriptive of chemical products for plastics in class 1. The GC thoroughly examined the relevant public’s perception of the trade mark and the goods at issue and held that for a sign to be descriptive, its meaning in relation to the specific goods applied for, should be immediately obvious to the relevant public. The GC further held that the relevant public for chemical products for plastics consisted of both professionals within the chemicals industry and specialists within the plastics sector. The evidence before the GC showed that it was common in the chemical sector to use abbreviations to refer to plastics and the letters D, I, N and CH respectively had been used to denote plastics made up of certain components. In addition, other evidence submitted by Evonik showed that specialists in the sector had used the term DINCH in various patents to refer to plastics, and that DINCH had been used in a guide of abbreviations for plastics produced in 2003, close to the filing date of the EUTM application in February 2002.
Accordingly, the GC found DINCH to be descriptive of chemical products for plastics in class 1 and invalidated the trade mark registration.
The decision is interesting as it shows that common abbreviations for goods may still be found descriptive, even if the abbreviation does not refer to a particular product. If the relevant public understands its meaning, this is enough to uphold an Article 7(1)(c) objection.