• New Clarity on English Words
    Marks After Manpower

    Brand owners have long felt besieged by OHIM’s practice on English language word marks. A play on words that is registrable in the United Kingdom frequently runs aground at OHIM, and OHIM’s inconsistency on which EU countries are relevant to assessing the descriptiveness of an English word mark bedevils efforts to plan strategic protection.

    Clarity may have arrived at last, though, following the CFI’s recent decision in Powerserv Personalservice GmbH v OHIM
    (T-405/05). The judgment sets down firm and sensible guidance for examiners and practitioners alike on the registrability of English language word marks as CTMs.

    A Temporary Position

    The new guidance arises from a CTM registration for MANPOWER covering employment agency services and other goods and services including software, printed matter, educational services and vocational counselling in Classes 9, 16, 35, 41 and 42. Manpower Inc., the registrant, was a US-based provider of employment agency services, trading internationally.

    Initially held to be descriptive, the mark was nonetheless registered on the basis of acquired distinctiveness in the United Kingdom and Germany.

    After registration, Powerserv, a German employment agency, applied to invalidate the CTM on the basis that MANPOWER was descriptive throughout the EU and Manpower had not proved acquired distinctiveness in a substantial part of the Community. The Cancellation Division dismissed Powerserv’s action and Powerserv appealed.

    The Board of Appeal partially reversed the Cancellation Division, finding that MANPOWER was indeed descriptive of employment agency services and related goods and services not just in the United Kingdom and Germany, but also in Ireland and other EU countries where English was commonly spoken in human resources departments, namely Austria, the Netherlands, Sweden, Denmark and Finland. However, during the appeal Manpower filed further evidence of acquired distinctiveness in those countries and the BoA upheld the CTM’s validity.

    Powerserv launched a further appeal before the CFI, arguing again that the mark was descriptive across the whole of the EU and that Manpower’s evidence failed, therefore, to address the position in all relevant countries. Powerserv further argued that the BoA had been wrong to take into account evidence post-dating the filing of Manpower’s CTM and indeed the filing of the invalidity proceedings. In any event, Powerserv argued that, even if Manpower’s CTM were to be upheld, its protection, where based on distinctiveness acquired after registration (as opposed to before filing), should be recognised as dating from the point at which the mark had been shown to have acquired distinctive character in a substantial part of the Community.
    Manpower, for its part, appealed OHIM’s finding that the mark was inherently descriptive in EU countries at all.

    Not Just an HR Problem

    In these rather complex proceedings, the CFI carefully separated the multiple layers of issues and emerged with a clear and helpful analysis.
    On the question of descriptiveness, it held that whether an English-language word mark was descriptive was not to be automatically assessed based only on perceptions in the United Kingdom and Ireland. Nor was there a set list of EU countries where English was to be presumed as understood for the purposes of examination of English-language word marks. Rather, the examiner must ask whether, from the point of view of the relevant consumer, the mark in particular EU countries had either been received into the local language, or would be understood because English was commonly spoken in the relevant business sphere.

    It was therefore necessary first to identify the relevant consumer, and in this the CFI held that the BoA had erred. The latter had held that the relevant consumer was primarily employers with human resources departments. In fact, though, it was not just employers but also aspiring employees who used the services of employment agencies, and the relevant public was therefore the entire working-age population.

    The CFI held that there was no evidence that specialist HR departments or the average working-age consumer in the Netherlands, Sweden, Denmark and Finland, and indeed in other EU countries apart from the United Kingdom, Ireland, Germany and Austria, commonly spoke English in the context of employment matters. Moreover, there was no evidence that MANPOWER had been received into the local language in these countries.

    On the other hand, it was clear that MANPOWER might be understood descriptively in respect of employment agency services in the UK and Ireland, despite the fact that many other synonyms for employees and staff were more commonly used. Moreover, there had been evidence that MANPOWER appeared in the popular German Duden dictionary and had been in descriptive use in Germany.

    Taking all this into account, the CFI held that MANPOWER was inherently descriptive of employment agency services and could also denote the subject matter of the Class 9, 16, 41 and 42 goods and services claimed, but only in the United Kingdom, Ireland and Germany, as well as in Austria, where German was spoken.

    Acquired Distinctiveness

    On the question of acquired distinctiveness, the CFI was persuaded that Manpower’s evidence of a long and highly visible market presence in the UK, Ireland, Germany and Austria was sufficient to enable the CTM to be upheld, even if some of the evidence relied upon post-dated the registration of the CTM and even the filing of the invalidity application.

    The Court noted that under Article 51 (2) CTMR, a CTM could be sustained on the basis of evidence that the mark had acquired distinctiveness either by the date of filing or by a date subsequent to registration. Moreover, some of the evidence of acquired distinctiveness filed by Manpower post-dated the filing of the invalidity application but could nonetheless be used to draw conclusions about the position at a previous date. It considered that this was how the BoA had interpreted that evidence.

    The CFI was not swayed by Powerserv’s argument that if the CTM were to be upheld, protection should be deemed to date only from when the mark had been proved to have acquired distinctiveness. In the Court’s view, this issue was relevant only to establishing the priority of competing rights, and since there were no such rights in this case the Court declined to consider the point. The CFI dismissed the appeal.

    Comment

    This judgment may have disappointed Powerserv, but its arrival is good news for others.

    It promises a more structured and consistent approach to the examination of word marks, and an end to seemingly arbitrary, one-size-fits-all lists of countries in which English is deemed understood for the purposes of examination. Gone, hopefully, are the days of exasperating demands to prove acquired distinctiveness of English word marks in tiny outposts like Malta or Cyprus, or in all EU countries where a little English is spoken by educated people or in business. The wheels will, hopefully, spin on future attempts to argue that descriptive English word marks must be proved to have acquired distinctiveness everywhere in the EU, simply because a little English is spoken everywhere.

    Examiners and practitioners should now be assessing objections on the basis of what the target consumer knows, and how he or she behaves, in the various EU countries. Even if examiners do not identify the countries to which an objection applies, the Powerserv guidance on when an English word mark is to be regarded as understood by the target consumer in a country is helpful guidance for how to approach arguments and evidence of acquired distinctiveness.
    Its usefulness is not, moreover, restricted to English-language word marks, but also to word marks in other languages. The same approach will apply.

    The Powerserv guidance will inevitably be easier to apply in cases where the target public is narrow or specialised. If the target consumer operates in a limited sphere, practitioners challenging descriptiveness objections can focus efforts to prove that English is not commonly spoken by that group in that context. However, this is not the only relevant point, since an application will also fail if the word or words at issue have been received into the local language such that the target consumer would recognise them anyway.

    This is a more general issue, and in Powerserv, where the target public was effectively the average consumer at large, the CFI was able to decide the point almost on the basis of common sense. There was no evidence suggesting that the word had been received into the local language anywhere but Germany and Austria, and in the absence of such evidence the Court declined to infer that it had been. By analogy, the Powerserv approach should be fairly straightforward even where the goods at issue are common consumer goods.

    The undecided question of priority, however, sounds a discordant note. The Court was no doubt right to demur on the issue in these proceedings, where it simply was not relevant. However, the question marks over just when protection is deemed to begin for CTMs registered and later proved valid based on distinctiveness acquired only after registration wave a red flag for anyone who may in future challenge another mark based on such a CTM.

    Both parties mounted strong cases supported by substantial evidence, and the fact that Powerserv itself applied to register the mark in Germany and Austria indicates that this dispute could certainly run. Nonetheless, for now, the CFI’s guidance arguably offers the best approach yet for applicants and examiners dealing with objections to CTM’s for English language word marks.