A trademark depicts the origin of the goods. Therefore
proprietors across the world seek to register marks which are
distinctive. An important consideration before zeroing upon a
trademark is that, the mark should not be descriptive of the goods
for which it is sought to be registered. A typical problem that
arises in selecting a descriptive mark was observed in the recent
decision of the General Court (European Union), in the case of
Olympus Medical Systems Corp V Office of Harmonization of
Internal Marks (OHIM).
Olympus Medical Systems Corp filed an application for
registration of a community trademark.
The registration sought was for Medical and Surgical apparatus
and instruments, comprising 3D processors, 3D light sources, LCD
monitors and 3D medical endoscopes. This mark was rejected by the
Trademark Examiner on the grounds that the mark was descriptive.
This decision was appealed but was dismissed. The matter was again
appealed before the General Court. The General Court accepted
OHIM's contention that the distinctiveness of a mark had to be
assessed according to the relevant public (consuming/using the
goods) and the goods for which the mark is being sought to be
registered. In the present case the logo/mark '3D'
represented the three dimensional function of the goods. There was
no distinctiveness involved. The Applicant's contention of the
mark's figurative element being creative and not merely
decoratively was rejected. The General Court upheld the OHIM's
contention that the figurative elements of the mark applied for,
reinforced the descriptive meaning of the word element, and hence
the board was justified in rejecting the registration of the mark.
The Appeal was dismissed with costs to be paid by the
Proprietors need to be careful when they choose their mark as it
will determine the level of protection that may be accorded to it.
This decision is a classic example of the consequence of attempting
to register a descriptive mark which lacks any distinctive
element(s) and both are grounds for refusal of registration of
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