This is a blog-post that those of you with a Russell Hobbs ‘Steam Glide’ iron can check out. And yes I own one and use it too. But first, read on and pick up some tips on ironing out your descriptive trademark…
There are certain absolute grounds for refusal to register a trademark. If any one of these is found then the trademark will be rejected. One of the absolute grounds for refusal is that a trademark is descriptive of the goods in question, their nature or their purpose. Another is that a trademark is devoid of any distinctive character. These two grounds are often closely interwoven, although they are separate grounds.
These absolute grounds apply to national and Community trademarks and can result in an application being refused and also revoked at a later date if the trademark has been registered.
In the ‘Steam Glide’ trademark case, a Community Trade Mark registration (‘CTM’) in respect of ‘electronic irons, electric flat irons, electric irons for ironing clothes, parts and fittings for the aforementioned goods‘ was revoked by the EU General Court (‘ECG’) on an application by Koninklijke Philips Electronics NV (‘Philips’). Philips alleged that the trademark was descriptive and/or lacked distinctiveness, contrary to Articles 7(1)(c) and (b) respectively of the Community Trademark Regulation No. 207/2009.
As a preliminary point, the ECG decided that it would consider whether ‘Steam Glide’ was a descriptive trademark from the perspective of the relevant public in the UK, Ireland and Malta, the English speaking countries of the EU, because the trademark was in English.
The ECG then held that the trademark described ‘directly and specifically’ one of the characteristics of these types of goods – that is their capacity to glide smoothly over ironed clothes by virtue of the steam generated by the appliance. The ECG considered that the mark ‘Steam Glide’ would evoke immediately, without further thought, a description of those goods or one of the inherent characteristics of those goods in the minds of the public concerned. That being the case the mark could be revoked as being a descriptive trademark in accordance with Article 7(1)(c).
The trademark owners argued that the mark ‘Steam Glide’ was a neologism. That is a newly coined word or phrase, made up of existing words. The argument runs that a newly coined word or phrase cannot be descriptive. The ECG did acknowledge that a mark could allude to the function or working of goods without being a descriptive trademark, where a syntactically (syntax is how words are arranged to form a phrase or sentence) unusual positioning of the words was not commonly used in the language of the mark. In this case English. Both words were, however, held to be descriptive on their own and the ECG found that there was nothing unusual in how the words were combined in the mark ‘Steam Glide’ (syntax) to overcome that defect. They remained descriptive in the mark. The court rejected an argument that the word ‘glide’ was suggestive of ‘suspension in the air and hovering’ and therefore not descriptive of ironing. It considered that the word ‘glide’ was reminiscent of the smooth motion of the iron gliding over clothes.
When this application was first bought by Philips, it was rejected by the Cancellation Division of the Office for Harmonization in the Internal Market (‘OHIM’), who found that the trademark was not descriptive. Philips appealed to the First Board of Appeal of OHIM and the Board overturned the decision holding that the expression ‘steam glide’ was a descriptive trademark because it was comprised of two English words, both referring directly to the nature and purpose of the goods in question and because there is nothing unusual about the combination of the words in the way that they were used in the trademark. ‘Steam glide’ was an ‘immediate, direct and easily understandable’ indication of the nature of the goods (that the irons emit steam and move smoothly across clothes). Effectively that is the decision that was upheld by the ECG.
A second argument was made that OHIM’s Board of Appeal did not conduct a proper analysis of whether the mark lacked distinctive character. However the ECG found that once a single finding that an absolute ground for refusal exists was made there was no need to go into further analysis.
So, do you think ‘steam glide’ is descriptive of your ironing experience?
A few things spring to mind. Would a competitor with less financial strength challenge a potentially descriptive trademark that was registered initially? Or would they wait and use the argument as a defence to infringement proceedings?
Secondly, there is a thin dividing line between merely alluding to goods or services, their function and how they work, which is permissible, and being held to be descriptive so that an application to register a trademark will be rejected. Each case will turn on its own facts and interpretation.
Thirdly, only one meaning of a phrase needs to be descriptive for the threshold for refusal to be reached. This risk is compounded because the trademark will be assessed from the point of view of the relevant public who will be native speakers of the language of the trademark, which could make a finding of descriptiveness more likely.
So if your business is choosing to use a compound of a number of words or a neologism, take care that the mark does not stray too close to descriptiveness in respect of the goods and services protected by the mark.
The full judgment can be found here.