CFI – November 19, 2009 – CLEARWIFI
On November 19, 2009, the European Court of First Instance confirmed that the mark CLEARWIFI lacked distinctiveness in class 38 for “telecommunications services, namely, providing hi-speed access to computer and communication networks, and the electronic transmission of voice, video and data via computer and communication networks”.
For the Court, CLEARWIFI did not diverge from English rules of syntax or word composition but contrary complied with such rules. It neither had a vague or evocative meaning. It could instead be perceived by the relevant public as indicating a particular form of the wifi technology enabling wireless connections of computers and electronic equipment with each other or to internet with a resistance to external interferences. The Court admitted that, although said direct link only related to part of the services claimed, the previous findings of the Board of Appeal remained lawful when considering that the sign could still completely be refused to registration.
The analysis made by the OHIM and the CFI quite falls within the recurrent Community standards as to the consistence of the mark applied for. Regarding CLEARWIFI as an ordinary build-up denomination, associating two current words with immediate meanings for the public was a situation likely to be expected in light of the strict position of the Community instances when it comes to words having a significance which is somehow connected with the products / services at hands.
Services of “electronic transmission of voice, video and data via computer and communication networks” were however actually out of the scope of the attention of the relevant public (the mark actually failed to get registered because a direct link existed between the sign and the other specified services). A partial withdrawal of the trademark specification so as to have the mark only maintained for these services could have been a route to consider so as to possibly overcoming the official action. Claiming products in class 9 could have also been a direction to take with an adapted recitation of products in order to increase the chances of gaining registration.