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 Applicant.
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 mark.
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