The Challenged Trade Mark
Less than a year ago, the Benelux Office for Intellectual Property (BOIP) had to assess the descriptive and distinctive character of the semi-figurative trade mark above (the Challenged Trade Mark) registered by the world's largest brewery, Anheuser-Busch Inbev S.A. (INBEV) for goods in classes 11, 20 and 32, and used, in particular, for a one-way keg system that keeps beer fresher for longer. This is one of the first cancellation actions before the BOIP.
The claimant, Heineken Brouwerijen B.V. (the Claimant) requested the cancellation of the Challenged Trade Mark in its entirety, because, in its opinion, it consists exclusively of elements which are to be considered descriptive for the goods for which it is registered and should therefore deemed contrary to Article 2.2bis (1)(b) and (c) of the Benelux Convention for Intellectual Property (BCPI).
It argued, in particular, that:
- the use of the word "PURE" in the context of beer is common and its laudatory character is obvious, which implies that it should be excluded from registration
- the combination of the words "PURE" and "DRAUGHT" simply indicates that the goods are made of draught beer only, or that the draught beer is clear, unblended and bright; the Claimant submitted that no extra meaning is added that would make the combination distinctive
- the slogan "BETTER TECHNOLOGY FOR A FRESHER BEER" is, in its opinion, purely descriptive and devoid of distinctive character; the Claimant pointed out that the language used is the simplest, correct form to convey the message that the goods, fresh beer, are made with a better technology existed until recently
- the graphical elements of the figurative trade mark are, according to the Claimant, "wholly indistinctive" and the stylised letter "U" in the word "DRAUGHT" does not add any further distinctiveness to the figurative trade mark.
INBEV disputed those claims as follows:
- On the use of "PURE" in the context of beer, INBEV responded that none of the examples put forward by the Claimant actually referred to the specific goods for which the Challenged Trade Mark is registered. It noted that a number of manufacturers of food and beverage products referred to by the Claimant have in fact sought and obtained trade mark protection for signs containing this word. The word element "PURE" can therefore, according to the Claimant, not, as such, always be excluded from trade mark protection.
- On the word combination "PURE DRAUGHT", INBEV first argued that the use of the word "PURE" does not make a combination mark invalid when it relates to beer or beer products. It pointed out that some manufacturers of beer products have in fact sought and obtained trade mark protection for signs containing the word "PURE". Furthermore, INBEV submitted that the word "DRAUGHT" is not among the basic English words that the Benelux public will immediately understand, and therefore cannot be considered descriptive for the relevant goods. INBEV finally observed that the Claimant itself used the combination "PURE DRAUGHT" as a distinctive sign and as a trade mark when referring to the goods covered by the Challenged Trade Mark.
- On the slogan "BETTER TECHNOLOGY FOR A FRESHER BEER", INBEV argued that the slogan introduces an element of conceptual intrigue and surprise as there is no obvious causal link between technology and a fresh beer in the mind of the Benelux public, and that it is more than a mere advertising message.
- On the graphical elements, INBEV claimed that the methodology used by the Claimant to assess the individual graphical elements was wrong in law, as it disregarded the overall impression. It pointed out that the stylised "U" represents "a keg and its cap" and thus fulfils the conditions of a distinctive element.
The BOIP first noted that the goods in question all relate to beer and means to store and dispense beer, and that the word elements in question are "PURE DRAUGHT" and the slogan "BETTER TECHNOLOGY FOR A FRESHER BEER".
The Office then separately analysed the slogan, the word combination and the figurative elements:
- Regarding the slogan, the BOIP considered this to be descriptive, as it only indicates that the goods in question result from or are provided by means of an improved technological solution with the purpose of serving a fresher beer. The Office inferred (by referring to the "VORSPRUNG DURCH TECHNIK" judgment of the CJEU) that there was no need to further ascertain whether or not the sentence has a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public.
- Regarding the word combination "PURE DRAUGHT", the BOIP emphasised that merely referring to English dictionaries is insufficient to prove the descriptive character of a word and that the perception of the relevant public must be taken into account. The Office then pointed out that if the word "PURE" is a very common word and is closely related to its translation in both Dutch and French, the word "DRAUGHT" on the contrary is not common and the Claimant did not file sufficient evidence showing that relevant Benelux consumers will perceive this word as descriptive for the goods in question.
- Regarding the graphical elements, in particular the stylised "U", the Office was of the opinion that it will not be perceived by the public as a descriptive element, and observed that this figurative element takes up a central and visually dominant position in the sign, and is a striking element which is stylised in such a way that it renders the sign distinctive.
The BOIP concluded with respect to the distinctiveness of the Challenged Trade Mark that the latter contains a non-descriptive and distinctive figurative element.
It also held that even if relevant Benelux consumers would consider the word elements to be descriptive – a fact which had been insufficiently proven by the Claimant at any rate – the Challenged Trade Mark is not devoid of any distinctive character in the sense of Article 2.2bis 1(b) BCIP. The BOIP ruled against the cancellation action of the Claimant.
This decision of the BOIP is a good example of how to make a non-descriptive and distinctive sign out of potentially descriptive word elements.