US Jeans brand Seven for all mankind (SAM) has lost a final attempt to secure a Community trademark (CTM) for its name, after the Court of Justice of the EU (CJEU) upheld an opposition from Italian backpack manufacturer Seven.
SAM had applied to register the word mark ‘Seven for all mankind’ for goods in classes 14 and 18 of the Nice classification system – including jewellery, accessories and bags – in 2005.
But Seven opposed the application, arguing that it was confusingly similar to its own CTMs for goods in classes 14 and 18 featuring the word ‘Seven’ in three different fonts.
Seven’s opposition was upheld by the Office for Harmonization in the Internal Market (OHIM) with respect to rucksacks, but rejected with regards to goods in other classes on the basis that there is only a low degree of similarity between the brands' trademarks.
Seven challenged this decision and its appeal was dismissed by OHIM’s appeals board, which found no likelihood of confusion and argued that Seven’s marks “possess a very weak distinctive character”.
But the board’s decision was overturned by the General Court of the EU after Seven applied to have it annulled.
Finding in favour of Seven, the General Court ruled that as the word ‘seven’ does not have any particular connection to rucksacks, it possesses “an average degree of inherent distinctive character”.
The court did not excuse the likelihood of confusion on the basis that SAM's mark also contains the words "for all mankind", and said this could be interpreted as a reference to who the goods are for "rather than a philosophical statement".
The CJEU upheld this decision in a final ruling published on Thursday, 21 February.
SAM did not respond immediately to requests for comment.
Roland Mallinson, partner at Taylor Wessing LLP in London, said he was surprised at the court's decision.
“I thought the Board of Appeal came to a sensible conclusion. The difficulty for the CJEU is that it was ruling on whether the General Court had misapplied the law, which it hadn’t, per se. If it was to review the case afresh, I hope it would have come to a different conclusion,” he said.
Mallinson also questioned the court’s interpretation of the phrase ‘for all mankind’ and said the CJEU's decision highlights a trend among European courts to offer overly broad protection to logo and word combination marks that include words with a low distinctive value.
“The Board of Appeal had taken a sensible approach not to grant a monopoly on the word ‘seven’, because if the applicant had filed an application for that word on its own, it would not have been granted as it has low inherent distinctiveness,” he added.
Matthew Sammon, partner at Marks & Clerk LLP in Manchester, said it can be difficult to assess the scope of protection of a generic term in a stylised format, and that brands should be wary of assessing marks based on the trademarks register, as significant use will increase distinctive character.
While less surprised by the court’s decision, Sammon said he had hoped for more consistency from OHIM and the European courts but added: “When you’re talking about marks with a relatively low distinctive character, there is always a risk that the decision can go either way. It becomes a fine line of interpretation.”
This article was first published on 22 February 2013 in World IP Review
7 for all mankind, Seven, trademark, appeal, CJEU