Descriptive Trade Mark Can Be Disputed by Anyone

(IPRinfo 2/2010)
Wim Helwegen
Reseacher, IPR University Center

In the judgement handed down on 25 February 2010, the European Court of Justice (ECJ) decided on the admissibility of OHIM cancellation proceedings filed by law firms in their own name and without an apparent interest in the case.

In December 2002, Lancôme applied for the registration of the word sign ”COLOR EDITION” as a Community trade mark in class 3 of the Nice Agreement (”Cosmetic and make-up preparations”).

After the registration in February 2004, the legal predecessor of the law firm CMS Hasche Sigle applied to the OHIM, requesting the invalidity of the trade mark on the ground of the trade mark’s descriptive character, art. 7(1)(c) and lack of distinctive character, art. 7(1)(b) CTMR (Community trademark regulation)

After the request was dismissed by the OHIM Cancellation division, the OHIM Board of Appeal ruled that ”COLOR EDITION” was indeed descriptive, lacked a distinctive character and therefore should be cancelled.

Did CMS have the capacity to request cancellation?
Lancôme lodged an appeal with the General Court of the EU in which it sought to overturn the Board of Appeals’ decisions on descriptiveness and distinctiveness and also disputed that CMS had the capacity to request cancellation of the trade mark. After the General Court ruled in favour of CMS, Lancôme appealed to the ECJ.

CMS requested invalidity based on Article 7 CTMR, which contains the absolute grounds for refusal.

Article 55(1)(a) CTMR stipulates that in such case any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued may file the request.

In case of an opposition based on relative grounds, Article 8 CTMR, only proprietors of earlier trade marks and their authorised licensees may oppose the registration.

Absolute and relative grounds
Lancôme alleged that capacity in its own name to sue and be sued implies an interest in the case, which CMS did not have. Moreover, according to Lancôme, a cancellation request by a party that has no interest in the request would not be in accordance with the principles of EU law. The ECJ set aside these arguments by referring to the difference between absolute and relative grounds for refusal.

The Trade mark regulation clearly states that requests for cancellation on absolute grounds can be made by any natural or legal person. Because absolute grounds for refusal serve the general interest, unlike relative grounds, which serve the interest of earlier trade marks, the category of persons able to invoke the absolute grounds for refusal is very broad.

As Lancôme’s other grounds of appeal were equally unsuccessful, the ECJ dismissed the appeal accordingly.

The Court of Justice of the European Union (ECJ), 25 February 2010. Lancôme parfums et beauté & Cie SNC v OHIM and CMS Hasche Sigle. Write the case number C-408/08 P in the search box: http://curia.europa.eu/juris/recherche.jsf?language=en