Court of First Instance of the European Communities – September 23rd 2009
On September 23rd 2009, the Court of First Instance of the European Communities confirmed the refusal of registration of the Community Trademark Application UNIQUE designating classes 9, 35 and 38 due to its common and laudative character.
The Applicant argued that a term that belongs to the common language such as « UNIQUE » could be registered as a trademark, provided the said term would not have became customary and usual in the telecommunication field. The Applicant also claimed that several other applications which were exclusively composed of the term “UNIQUE” had been registered.
By rendering its decision solely based on a general ground for all the products and services concerned, the Court did not follow the Applicant’s reasoning and also confirmed that it usually is the responsibility of the Applicant to substantiate more thoroughly by concrete and detailed indications to prove that the filed Community trademark application does bear an intrinsic distinctive character.
The Court concluded that the Board of Appeal had rightly concluded to the lack of distinctiveness of the requested Community trademark application from the laudative character of the term UNIQUE and from the fact that this term could possibly be used by any company to promote its products or services as “a mere promotional or advertising information”.
Even if it is in fact the responsibility of the company FRANCE TELECOM to convince the Court of the intrinsic distinctive character of the term UNIQUE, which in the opinion of the Court “would be best done by the Applicant”, the assessment of such distinctive character remains in our opinion fairly strict particularly regarding the scope of the Board of Appeal’s obligation to substantiate its decision. The Board only gave a general ground for its decision and merely stated that “this term could be used by any company to promote its products or services, notably these comprised within classes 9, 35 and 38”.
The Court legitimates the position of the Board of Appeal by merely stating that the Board could indeed content itself with such a general ground since that all of the products and services of interest concerned the telecommunication field.
It might have been more relevant for the Applicant to consider having a trademark protection merely through national applications or at least through an international trademark designating its countries of interest…