La généricité par l’usage : illustration par la jurisprudence PERLE

The OHIM recently made an interesting analysis regarding words that have become generic through use. The analysis confirms their understanding of the generic character of words, which can affect certain terms, and provides specific details on what a generic character entails.

Additionally, the community trademark, comprising the word “pearl” written in capitals with an apostrophe at the end was applied for in 2006 in Class 33 for: “Wines, spirits, liqueurs, sparkling wines, alcohol extracts”. In 2010, the examiner refused the requested trademark protection for two products, namely “wines and sparkling wines”.

The refusal was based primarily on the fact that in the field of oenology, a lightly effervescent wine is referred to as “pearl”, or even “pearlized” ̶  a term which, incidentally, can be found in dictionaries. Given the public’s familiarity with this common term, which has become generic through use, the CJEU confirmed the decision taken by the Board of Appeal and considered that:

–          the term “PEARL’” is used to describe “wines and sparkling wines”

–          the term also lacks a distinctive character

–          distinctive character has not been acquired through use

As such, the trademark cannot be registered for “wine and sparkling wine products”.

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