October 2007
Posh Trade Marks for Posh Speakers
his month has seen further developments in what passes as acquired distinctiveness in relation to registering shape trade marks with the Court of First Instance’s (CFI) decision in Case T-460/05 Bang & Olufsen v OHIM.
In 2003 the upmarket speaker specialists, Bang & Olufsen, applied to register an image of a pencil shaped loudspeaker as a Community trade mark. The European trade mark registry, OHIM, initially rejected the application on the grounds that mark was overly descriptive. As trade marks are registered for particular goods and services, in this instance loudspeakers and music furniture, they need to be capable of distinguishing between the different providers of those goods and services, and not merely descriptive of those same goods and services. Otherwise rights holders could monopolies a particular market by simply registering the names of the goods and services they sell and prevent other businesses from being able to refer to their own goods and services by their actual names. OHIM considered an image of a speaker used for a company that sells speakers to be a little too descriptive.
However the CFI annulled OHIM’s decision on appeal describing the image as “truly specific”. Interestingly the CFI based this decision partly on the fact that because of the “nature of the goods” in question “the average consumer displays a particularly high level of attention when purchasing such goods” and partly on the exact nature of the mark in question. The “average consumer” of expensive electronic durables spends more time deciding on the features of their latest gadgets. Added to this fact while the mark is a speaker it is also an unusual looking speaker. This meant that the pencil shaped speaker had the “required degree of distinctiveness” and was thus registrable.
Briffa’s Opinion
This is certainly a surprising decision given how descriptive the mark is as it clearly indicated the type of goods it represented. It seems the more sophisticated consumer of electronic durables notices the unique features of the particular logo attached to their speakers and hi-fis. However based on the underlying logic of why the descriptive trade marks are usually unregistrable, after this decision will other businesses be prevented from referring to speakers in their promotional materials? They will just not be able to use the image of this specific pencil shaped speaker. Sellers of pencil shaped speakers beware.