The General Court has upheld the decision of the Office for Harmonization in the Internal Market (OHIM) to reject registration of ‘CARBON GREEN’ as a trade mark. The Court held that the words were descriptive of the goods in respect of which registration was applied for. The Court cited the absolute grounds for refusal of registration under Article 7 (1) (b) and (c) of the Community Trade Mark Regulation as the basis of its decision.
The proposed trade mark
The applicant applied for the word-only Community Trade Mark ‘CARBON GREEN’ in respect ofÂ ÂReclaimed rubber, namely recycled carbonaceous materials, namely, plastic, elastomeric, or rubber filled materials obtained from pyrolized tyre char and plastic, elastomeric, or rubber compounds formulated using such filler materialÂ under Class 17.
Refusal of registration
The General Court ruled that the individual words which make up the mark, as well as the mark as a whole, are descriptive of the goods against which registration was sought. In particular, it pointed out that carbon is a naturally occurring element present in both rubber and char. It also stated that the word green is often used to describe something as environmentally friendly and the inclusion of the words ‘reclaimed’ and ‘recycled’ in the applicant’s specification demonstrated the descriptive use of the word.
On this basis, the decision of the OHIM was upheld and the appeal was dismissed by the General Court.
A different outcome?
Whilst the reasoning of the General Court, and indeed the OHIM was reached with reference to established legal principles, the applicant could have added distinctiveness by registering a figurative mark. A pictorial element could have added the requisite level of distinctiveness to allow for successful registration. The word mark may also have been registrable if distinctiveness had been acquired through use of the mark prior to an application to register.
By Aasim Durrani. Aasim is a Trainee Solicitor and can be contacted on firstname.lastname@example.org