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14 September 2015Trademarks

EE mark ‘banal’, rules EU court

The European General Court has ruled that telecommunications company EE’s Community trademark (CTM) application for white dots on an ivory background is “banal” and “lacked distinctive character”.

On Thursday, September 10, the court upheld a decision by the Office for Harmonization in the Internal Market (OHIM) to reject EE’s application.

The application covered a pattern of white dots spread out across an ivory background. EE applied for the mark at OHIM in November 2012 to cover a range of telecoms services, but examiners rejected the application in February the following year.

EE appealed against the decision in April 2013, but the application was again rejected by OHIM’s First Board of Appeal.

In its January 2014 ruling, the board of appeal said there was “nothing unusual” about the mark and that the colours were “commonly used in communications and advertising, particularly in sectors such as science, technology, education, banking and insurance”.

In EE’s appeal to the court, the telecoms company complained that OHIM’s examiners were wrong to question whether the ivory and the white colours should be assessed on whether they “possess distinctive character”.

Instead the company argued that the validity of the CTM application should be based on an “overall assessment” of the impression that the mark gives.

But the court was not convinced by EE’s argument.

Upholding the board of appeal’s ruling, the court said that assessing the overall distinctiveness of the sign is not incompatible with assessing the distinctiveness of each of the individual features of the mark.

According to the court, EE’s mark may have qualified for protection if the individual features had created an impression that is “greater than the mere sum of its parts” but the applied-for mark failed in that regard.

The court added that the board of appeal was correct to conclude that the combination of a specific colour with white particles in a certain infinite pattern was “nothing more than the sum of its banal and non-distinctive features”.

Furthermore, EE also complained that the board of appeal failed to take into the account the goods and services covered by the mark and the perception of the mark based on the relevant public.

However, both of these claims were rejected by the court.

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