IP Cases & Articles

Assessing inherent distinctiveness

For a while now the widespread perception has been that OHIM's policy regarding the registrability of marks has gradually been becoming more and more strict. A recent case from the General Court (GC) confirms these fears to the extent that marks often acceptable to the UK Intellectual Property Office (UKIPO) and certainly the US Patent and Trademark Office (USPTO) are often summarily dismissed in Alicante despite the best efforts of brand owners and their outside advisors.

Registration of the BE HAPPY trade marks

The case concerned the trade mark BE HAPPY, originally registered by the trade mark owner Creativ Ent. GmbH back in 2007 for a range of goods in classes 16, 21, 28 and 30, with a subsequent and separate registration in 2010 for goods in classes 9, 11 and 18. Both marks proceeded through the application process without obstacle and neither mark was opposed with the result that both were registered.

Cancellation of the BE HAPPY trade marks due to lack of distinctive character

In February 2012 applications were filed by a German competitor seeking a declaration of invalidity on the basis that the marks were devoid of any distinctive character. The Cancellation Division upheld the application for invalidity, a decision confirmed by the Board of Appeal. The trade mark owner took the case to the GC which issued its judgment on 30 April 2015. The GC concluded that, whilst the trade mark BE HAPPY expresses an objective message inviting one to "be happy", the message is not a direct reference to the quality or nature of the goods covered by the contested marks. Notwithstanding this the court found that the mark BE HAPPY would immediately be perceived by the public as an expression that promotes the purchase of goods/services. The GC therefore concurred with the Board of Appeal that the mark was devoid of any distinctive character because of its "promotional and laudatory nature".

The owner had alleged before the Board of Appeal that the decision to cancel the registration was merely as a result of recent case law for slogans which have, for the most part, been rejected outright as unregistrable before OHIM; however, the GC rejected this argument.

The owner was left with two cancelled registrations despite originally being protected for a range of goods including computers, glasses, coffee making machines, bags and handbags, games and confectionery. As a result one might reasonably conclude from the judgement of the court that BE HAPPY would be unregistrable in respect of any goods/services.

You can BE HAPPY in class 10

Readers may therefore be interested to learn that in the very same month as this judgement OHIM has examined, accepted and published another application for BE HAPPY in relation to goods in class 10. Is this an inconsistency on the part of OHIM?

The case law is clear in that if consumers can make a direct link between the goods and the mark in question then there is likely to be an absence of distinctive character. Can the acquisition of a handbag make you "be happy"? What about the consumption of sweets?

Readers can decide whether or not they would place the goods of the very recently accepted application into the same category or not. They include a wide range of goods which can probably best be described as "providing adult pleasure" and thus one might think, happiness (temporary or otherwise). Time will tell whether the resulting registration will stand up to any subsequent challenges.

In any event, we see no real reason why the BE HAPPY mark should not be registrable on the basis that the proprietor would only be able to prevent third parties from using marks virtually identical to those as protected. In the case of the phrase "be happy", the trade mark owner could never hope to monopolise either word appearing in its mark – thus its rights would lie in a combination of the two and be afforded a very limited scope of protection. OHIM's approach to assessing inherent distinctiveness continues to be increasingly strict.

Case details at a glance

Jurisdiction: European Union
Court: General Court
Parties: Steinbeck GmbH v OHIM
Citations: T-707/13 and T-709/13
Date: 30 April 2015