EU court denies tobacco company’s multiple appeals
Trio of appeals against trademark refusals fail | ‘Together. Forward’ mark plus two others consisting of black lines are snubbed | General Court sides with Board of Appeal.
The EU General Court has denied a trio of appeals filed by Philip Morris against EU Intellectual Property Office (EUIPO) decisions refusing trademark applications.
In three separate decisions handed down yesterday, 5 October, the General Court sided with the EUIPO’s Board of Appeal conclusions that each of the trademarks did not serve as an indication of the commercial origin of the goods at issue.
Philip Morris had applied for the three marks in 2020, with one mark covering the word sign ‘Together. Forward’ and the other two marks were figurative signs consisting of black lines. Each of the trademarks covered goods in class 34, including electronic smoking devices, tobacco products, and liquid nicotine solutions for use in electronic cigarette.
The EUIPO held that the two figurative marks were devoid of any distinctive character in May and June last year.
The office concluded that the two marks were “incapable of being easily and instantly committed to memory by the relevant public and that the relevant public would not perceive it as being an indication of the commercial origin of the goods at issue, but as serving an aesthetic, ornamental or decorative purpose”.
On appeal, Philip Morris claimed that the marks possess distinctive character as they are neither "excessively simple”, nor consisting of a basic geometric shape. The tobacco company also alleged that the trademarks were “capable of being easily committed to memory”, on account of their originality.
‘Commonplace’ colour combination
In its conclusion, the General Court said: “First of all, it should be noted that the contrasted effect alleged by the applicant results solely from the fact that the mark applied for is in black and white.
“Such a combination of colours is commonplace, with the result that it cannot, by itself, confer on that mark a characteristic likely to be perceived by the relevant public as an indication of the origin of the goods at issue.”
The court added that, contrary to what Philip Morris claimed, “it does not follow from the notion of general interest underlying Article 7(1)(b) of Regulation 2017/1001 that a mark must be regarded as distinctive solely on the ground that the registration of that mark is not liable to harm the competitors of the proprietor of that mark”.
The tobacco maker’s criticism of the Board of Appeal’s alleged failure to explain why the mark applied for was devoid of any distinctive character was also dismissed.
Also in June 2021, the EUIPO held that the ‘Together. Forward’ trademark would understood by the relevant public as a promotional expression and not as an indication of the origin of the goods.
Philip Morris, in its appeal against the decision, argued that the trademark applied for constitutes a ‘resonant’ slogan capable of indicating the commercial origin of the goods at issue.
However, the court rejected Philip Morris’ appeal, finding that the EUIPO was right to find that the mark applied for was not distinctive.
Philip Morris was ordered to pay the costs in all three cases.
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