Should the above sign be permitted registration for cigarettes
and tobacco products? This was the question before the EU General
In brief, the General Court upheld the decisions of the
EUIPO and the Board of Appeal and ruled that the
sign was not registrable. The General Court's reasoning was
that the mark clearly had a laudatory and promotional meaning for
the goods concerned; that it would suggest to the relevant public
the idea of "number 1 brand" for the goods; and consumers
would not perceive any indication of commercial origin, only the
promotional information that the mark is "number 1".
In reaching its decision, the Court first confirmed the position
that a mark having a laudatory connotation does not itself mean
that it is not registrable. A mark will be registrable where it
will be seen by the public as both a promotional formula and as an
indication of origin.
Against that backdrop, it has to be said that this decision
seems questionable. It is difficult to understand why the mark
should not be capable of acting as a trade mark in the normal way.
Looking at the image below of the brand on a packet of cigarettes,
one has some sympathy with the applicant's viewpoint that it
would be understood as an indicator of origin. There is no obvious
reason why a consumer would not quite naturally buy the product
and, if he liked it and wanted to buy another, ask for "a
packet of Mark 1 cigarettes please".
Of course the decision in this case may turn out to be largely
academic if other EU countries follow the UK's recent lead and
enforce plain packaging for cigarettes.
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