The word mark AROMA had been registered as an EUTM in respect of
various electrical cooking utensils including juicers, food
processors, convection cooking ovens, bread makers, sandwich makers
and hot plates. An application was filed to declare the mark
invalid on the basis that AROMA was descriptive and non-distinctive
of the goods covered.
Initially, the Cancellation Division rejected the declaration
for invalidity. On appeal the Fourth Board of Appeal found that the
word AROMA had the same meaning as, for example, smell or fragrance
and that there therefore was a link between the goods covered by
the registration and the mark such that the registration was
descriptive and therefore non-distinctive. The registered
proprietor appealed to the General Court.
As a preliminary point, the Court found that the purpose of
electric cooking utensils is to "prepare, cook, toast or roast
food stuffs and beverages" and that these goods are aimed at
the average consumer.
The trade mark owner disputed the finding of the Board of Appeal
that AROMA meant smell or flavour. The General Court found however
that the terms were synonymous even if aromas were a sub-set of
smells given that they had a positive connotation.
The trade mark owner stated that the Board of Appeal had carried
out a complex test which an average consumer would not and it had
given an indirect meaning to AROMA. Contrary to the Board of
Appeal, the trade mark owner stated that AROMA does not refer to
the cooking utensils but to the food cooked in them and therefore
AROMA cannot be a characteristic of or refer to an intended use of
The General Court agreed stating that cooking utensils do not
give off a particular aroma and therefore the nature of those goods
has no direct relationship with the word AROMA . Relying on its
definition of electric cooking utensils, it found that the function
or intended use of these goods is to cook, toast etc. not to give
foodstuffs or beverages an aroma. This is a characteristic of food
prepared with the help of the goods covered by the registration. In
the light of this the mark was not descriptive demonstrating at
most an indirect connection with electric cooking utensils.
The court drew a distinction with the earlier case GentleCare
where GentleCare was found to be descriptive of machines whose
primary function was to treat fabrics as it would be expected that
fabrics would be the subject of particular care requiring a degree
of gentleness. The Court followed the FUN case where FUN was not
descriptive of motor vehicles. It found that the sign FUN in
respect of motor vehicles could give those goods a positive image
but did not go beyond suggestion and was too vague to confer
descriptive character, The same principles applied to AROMA.
Having found that the mark was not descriptive, the Court went
on to find that AROMA is not commonly used in the world of electric
cooking utensils. It held that the mere fact that AROMA may be seen
as promotional and laudatory did not mean the mark was not
distinctive. It concluded that the mark could even be regarded as
having a certain degree of originality since the term AROMA was not
normally used in this way.
Accordingly, the declaration for invalidity failed and the
registration remains on the register.
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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