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Small is beautiful?Small is beautiful?

» Posted on: 18 February 2015

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Innovation First Inc v OHIM

Earlier this week, the EU General Court confirmed OHIM’s decision to refuse to register the word NANO as a Community trademark in classes 9 (robots for educational use) and 28 (toy robots) on the grounds that:-

  1. it was descriptive; and
  2. it was devoid of any distinctive character.

In response to arguments that ‘nano’ had a precise mathematical meaning, the Court said that the relevant public would immediately associate the term with the small size of the goods in question. The descriptive character of a trade mark must be assessed, first in relation to the goods or services in respect of which registration is applied for and second, in relation to the perception of it by the relevant public, being the consumers of those goods or services. OHIM is entitled to base its findings on facts arising from practical experience generally acquired of the marketing of goods. ‘Nano’ has acquired a meaning which diverges from its mathematically exact definition and denotes a ‘small’ size.

This decision reinforces the rationale behind the changes in the examination of trademark applications set out in our earlier article - when OHIM announced its new practice of objecting to terms in trademark applications that are deemed too broad or too vague and which lack the required clarity and precision.

The trademark applicant in this case had its appeal dismissed and had to bear the costs, demonstrating that specialist advice should be taken before making a trademark application and certainly before launching into an appeal against refusal of a mark.

For guidance on trademark registration and how best to protect your intellectual property against unfair competition and passing off, contact Tony Catterall, Head of the Intellectual Property team at Taylors, on 01254 297900 or via email at tony.catterall@taylors.co.uk. Taylors is the only North West-based firm appointed as a legal affiliate to the national organisation, Anti Copying In Design (“ACID”).

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