“This article first appeared on WTR Daily, part of World Trademark Review, in May 2022. For further information, please go to www.worldtrademarkreview.com. »
- The EUIPO rejected an application for AMSTERDAM POPPERS in Classes 3 and 5 on the ground that it was descriptive
- The court upheld the decision, finding that Amsterdam is notorious for its tolerance of the use of narcotics
- The relevant public would understand, without any further reflection, that the products originate from Amsterdam
On 6 April 2022 the General Court issued its decision in Funline International v European Union Intellectual Property Office
(EUIPO) (Case T-680/21).
Funline International filed a trademark application for the word mark AMSTERDAM POPPERS in Classes 3 and 5. The EUIPOexaminer refused the application, holding, firstly, that it was contrary to public policy or to accepted principles of morality (Article 7(1)(f) of Regulation 2017/1001) and, secondly, that the term was descriptive for “poppers, stimulants with an aphrodisiac and/or euphoric effect”. The examiner considered that the relevant consumer would form a direct link between the term ‘poppers’ and the city of Amsterdam.
The applicant appealed. The Board of Appeal of the EUIPO rejected the examiner’s decision on the first ground, considering that the use of poppers was not prohibited in any member state. Therefore, the term was not contrary to public policy or accepted principles of morality. However, it upheld the decision on the second ground, finding that the term is descriptive for the abovementioned goods.
Funline appealed to the General Court.
The court first found that only one of the pleas raised by the applicant – namely, that concerning the descriptiveness of the mark applied for – was admissible.
On the substance, the court first recalled the principles of Article 7(1)(c) of Regulation 2017/1001, according to which a sign cannot be registered if it composed solely of descriptive elements, even if the sign is descriptive in only one member state.
Second, for a sign to be considered descriptive, the relevant public must immediately recognise, in a direct and concrete manner and without any further reflection, a description of the goods and services in question or their characteristics. Consequently, in the case of a geographic designation, if the relevant consumer makes a link between the term in question and the location, or may do so in the future, then the sign would be considered descriptive.
In the present case, the applicant contested the descriptive character of its mark, considering that the relevant consumer would not create a link between the city of Amsterdam and the use of narcotics. It added that the relevant public would know that there is no production of poppers in Amsterdam. The court rejected this argument and held, as did the EUIPO, that Amsterdam is notoriously known by the general public for its tolerance of the use of narcotics, and is associated with nocturnal activities.
Therefore, the relevant public would understand, without any further reflection, that the contested products originate from the city of Amsterdam.
Additionally, the court recalled that, if one can analyse a mark consisting of several terms by considering the terms in isolation from one another, the juxtaposition of two descriptive terms does not necessarily render the entirety of the sign distinctive. For the sign to be considered distinctive as a whole, the combination of the terms must be original with regard to everyday language.
However, in the present matter, the sign AMSTERDAM POPPERS would be seen as grammatically correct by the relevant public and as signifying “poppers originating from Amsterdam”. Therefore, the link between the city and the contested products is inevitable and the sign must be rejected for these goods.
Even though the decision does not revolutionise the examination process, it serves as a reminder of the criteria for the appreciation of descriptive character, notably when a sign contains a geographical location. It also highlights the importance of evaluating the filing strategy and taking the relevant public into account, especially as a finding of descriptive character in one EU member state renders the sign descriptive for all of the territory.
Mélanie Villanova and Marianna Kull – INLEX IP Expertise