20 December 2018
In June 2015, Mr Dubois and MFunds USA LLC obtained an EU trade mark registration for the word mark FUNNY BANDS in relation to goods and services in classes 14, 17 and 35. A few days later, Out of the blue filed an application for a declaration of invalidity in respect of all the goods and services covered by the registration on the basis that the mark is non-distinctive and descriptive (Articles 7(1)(b) and (c) of the EU Trade Mark Regulation).
The Cancellation Division rejected the application for a declaration of invalidity. The EUIPO Board of Appeal dismissed the appeal against this decision. Out of the blue then filed an appeal before the General Court seeking the annulment of the decision of the Board of Appeal and the declaration of invalidity of the mark at issue. Out of the blue however partly limited its application to the following goods and services:
Firstly, the General Court noted that, in order for a sign to be descriptive within the meaning of Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the mark and the goods and services in question. The relevant public needs to be able immediately to perceive the sign as a description of one of the characteristics of the goods and services offered under the mark. In addition, it is not necessary that the sign in question is used in a descriptive way. It is sufficient that the mark could be used for such purposes.
The Court also considered that, in the present case, the relevant public consists of both average consumers and specialised professionals. In addition, as the mark FUNNY BANDS is composed by two English words, the sign needs to be assessed in relation to English-speaking consumers within the EU.
In relation to the meaning of FUNNY BANDS, the General Court noted that the two words elements, taken in isolation, have a clear meaning that is easily understood by the relevant public. Moreover, the combination of FUNNY and BANDS is consistent with English grammar rules: the adjective "funny" seeks to describe a characteristic of the noun "bands". For these reasons, the structure of the mark is not unusual.
The General Court therefore rejected EUIPO's arguments that the combination of FUNNY and BANDS has an unusual nature. In fact, the term "bands" covers a large number of different variants as regards to the visual design of strips or loops. Accordingly, the goods designated by the term "bands" can have a special visual design, awkward shapes and unusual colours. It follows that at least a significant part of the relevant public will understand the mark as indicating "bands" which are humorous, strange or curious. So the combination of "funny" and "bands" will refer directly to one of the characteristics of the goods covered by the term "bands".
In conclusion, the Court recognised that the assessment of what is in fact "funny" is a result of a subjective assessment. Nevertheless, the opinion of the Court is that the combination of the terms "funny" and "bands" conveys to the relevant public a specific message about the characteristics of the goods covered by the registration, which is that the goods designated by the term "bands" are of a particular design, such as unusual colours, awkward shapes or humorous motifs and "seek to provide laughter or create a strange or curious appearance". Thus, the term "funny" could serve to describe a characteristic of goods designated by the term "bands".
The mark was therefore declared invalid.
Case ref: T-214/17
by multiple authors