Composite EU trademarks: protection of non-distinctive elements

According to EU trademark law, the registration of laudatory and descriptive terms as trademarks must be refused. Competition must not be restrained by protecting terms that may be used in trade for advertising or determining the quality of a product. This rule applies also if the term is perceived as laudatory or descriptive in only a part of the EU. Only acquired distinctiveness of a term allows an exception to this rule.

In general, the Court of Justice of the European Union (CJEU) and the General Court apply this rule rather strictly. However, laudatory and descriptive terms may be registered and protected if they contain additional elements, such as graphics of some distinctive character or word elements.

Since the public does not tend to analyse trademarks or consider the elements of a trademark separately, trademarks must be considered as a whole when assessing their character. Such composite trademarks consisting of non-distinctive and distinctive elements are granted protection under EU law as a whole.

For example, the term ‘king’ has been considered in itself non-distinctive and purely laudatory for its meaning ‘the best in a sector’. However, when combined with the terms ‘curry’ or ‘tofu’, the composite trademarks ‘Curry King’ and ‘Tofuking’ as a whole—which require some process of reflection to understand them as laudatory or descriptive concerning the goods applied for—might be considered slightly distinctive for food.

Non-distinctive elements and similarity

Since non-distinctive signs must be refused trademark protection, it may at first be questioned whether the non-distinctive element (‘king’) may be taken into account at all when assessing similarity with a conflicting sign. The answer is ‘yes’, due to the principle that composite trademarks are to be considered as a whole and that the overall impression of the trademark determines the assessment of similarity. This is consistent case law not only at the European level (CJEU case C-20/14) but also in national jurisdictions within the EU (eg, German Federal Court of Justice case I ZB 56/14).

However, the question is whether similarity may be acknowledged if non-distinctive elements (‘king’) of the respective marks are congruent only and the other elements are clearly dissimilar, such as ‘curry’ and ‘tofu’. It is questionable whether the principle that composite signs are to be considered as a whole goes that far.

The finding of similarity on the basis of identity or similarity with a non-distinctive element would mean granting this element protection. Considering the principle that purely laudatory and descriptive signs must be refused trademark registration and protection, the answer to this question would be ‘no’.

Court findings

Nevertheless, the General Court’s and the CJEU’s answers to this question have often been in the affirmative.

In its decision of June 28, 2012 (case C-599/11), the CJEU confirmed the General Court’s finding of similarity between ‘Curry King’ and ‘Tofuking’ and its consideration that the common term ‘king’ establishes similarity between the trademarks.

Neither the General Court nor the CJEU mentioned the rule that non-distinctive elements shall not be protected. They both succinctly stated that the degree of distinctiveness of the trademark ‘Curry King’ is only one factor to be taken into account when assessing similarity.

“When assessing the similarity of composite signs, the CJEU repeatedly finds that a purely descriptive verbal element may dominate the overall impression of a composite sign.”

Accordingly, the General Court, in its judgment of October 10, 2012 (case T-333/11), found the trademarks ‘Star Snacks’ (word) and ‘Star Foods’ (with figurative elements) covering food to be similar.

Moreover, the CJEU, in its decision of November 29, 2012 (case C-42/12), found that a weak or non-distinctive element—‘Alpine’, concerning rucksacks and backpacks—was not only to be considered for the assessment of similarity, but may even have a dominant position in a composite mark so that similarity concerning the non-distinctive element may be sufficient for the finding of similarity of the composite signs.

The CJEU again came to this finding by stating that the distinctive character of a trademark is only one factor determining the assessment of similarity and that a global appreciation of the trademarks at issue is required. The CJEU did not address the consequence that this leads to the protection of signs that are not eligible for registration.

Change ahead?

However, recent decisions of the General Court have indicated a change.

By its judgment of May 13, 2015 (T-608/13), the General Court found that the element ‘Air-Tours’ of a composite trademark concerning air transport services cannot, for its descriptive character, be considered intrinsically dominant. It further held that the incorporation of a sign in a composite mark leads to the finding of similarity only if the incorporated component constitutes the dominant element within the overall impression created by the composite mark.

So, according to these considerations, congruency in a non-distinctive element would not lead to the finding of similarity between the trademarks at issue.

Accordingly, for the descriptive character of the element ‘post’ for courier services, the General Court found the trademarks ‘Post’ and ‘TPG Post’ to be dissimilar in another decision of May 13, 2015 (case T-102/14).

Does this mean that there is a change in sight? Not really, since the CJEU in a judgment of March 19, 2015, made the clear statement that a purely descriptive character of a verbal element does not preclude that element from being acknowledged as dominant for the purposes of assessing similarity of the signs at issue.

The above-mentioned decisions of the General Court of May 13, 2015 did not change the CJEU’s position as the court demonstrated subsequently in its decision of October 22, 2015 (case C-20/14), that even an element of a weak distinctive character may dominate the overall impression of a composite mark, since the position of the element in the sign or its size makes an impression on consumers and can be remembered by them.

In summary, when assessing the similarity of composite signs, the CJEU repeatedly refers to the principle that a trademark must be assessed by its overall impression and does not consider that there may be a limit to this rule. It does not consider that, due to the principle that non-distinctive and descriptive terms must be refused protection, congruency in such terms only may not be sufficient for the finding of similarity between composite marks. Rather, the CJEU repeatedly finds that a purely descriptive verbal element may dominate the overall impression of a composite sign.

This position of the CJEU allows the following conclusion for prosecution practice: protection for non-distinctive trademarks may be obtained by filing the non-distinctive term along with additional distinctive elements as a European Union trademark.

The more eye-catching the non-distinctive element is within the composite trademark and the weaker the distinctive character of the additional elements, the more  the protection of the composite trademark focuses on the non-distinctive element. The composite trademark may thereby be protected against trademarks with nothing in common but the non-distinctive element and which differ with respect to additional figurative and descriptive verbal elements.

Stefan Abel is a partner at  Klaka Rechtsanwälte in Munich. He can be contacted at: sabel@klaka.com