Loutere nevenschikking

Het argument dat registratie niet heel erg is, omdat de bescherming heel beperkt is en het voor iedereen eigenlijk wel duidelijk is dat de termen Golf en USA publiek bezit zijn, gaat niet op. In de praktijk zou dat alleen maar tot onduidelijkheid leiden.  

“The scope of the exclusive right of the proprietor of the mark therefore extends beyond the use of the mark in the narrow sense, since it also encompasses terms that entail a likelihood of confusion with that mark. In the present case, it appears at least possible, if not likely, in the case of a registration of the mark applied for, that prudent enterprises which are active in the golf field will choose to avoid using a combination of the terms ‘golf’ and ‘USA’ in order to avoid any risk of making themselves liable towards the proprietor of the GOLF USA trade mark. The argument that the availability of each of the components of the mark applied for is not affected by the registration of that latter mark is therefore unfounded.” (33)  

Bovendien is ‘golf’ niet, zoals de deposant stelt, een zodanig ruim begrip dat het niet beschrijvend kan zijn voor de desbetreffende waren en diensten:

“In the present case, given that the descriptive character of the term ‘USA’ is not contested in the context of this plea, it needs to be investigated whether such a link exists between the term ‘golf’ and the goods and services concerned, which, in the present case, are those in Classes 28 and 35, since the Board of Appeal did not find that such a link exists for the goods covered by Class 25. In Class 28, the goods concerned are golf equipment and, in Class 35, the services concerned are the retail sale of that equipment. From the point of view of the consumers of those goods and services, namely golf players, there is, therefore, a direct link between the component ‘golf’ of the mark applied for and the goods and services for which registration of that mark was sought. It follows that the term ‘golf’ is descriptive in relation to the goods and services at issue, which cannot be called into question by the allegedly general character of the term ‘golf’.” (36)      I

“The link between the indication given by the sign and the nature of the goods and services concerned in Classes 28 and 35 respectively is sufficiently direct for the reference consumer to perceive the descriptive message contained in the sign and for that message to override the sign’s ability to indicate the commercial origin of the goods and services.  In addition, (…) in the context of the present case, that the consumer concerned might understand the sign GOLF USA as an indication that the goods and services at issue come from the United States. The applicant has not contested the existence of that risk.” (37)

Het merk is niet alleen beschrijvend in de zin van 7(1)(c) (en dus niet onderscheidend) voor de klassen 28 en 35, maar ook niet onderscheidend (want mogelijk beschrijvend) in de zin van 7(1)(b) voor klasse 25:

“By reason of its descriptiveness the mark applied for is therefore necessarily devoid of any distinctive character in respect of Classes 28 and 35 and it is not necessary to examine that point individually.” (45)

“(…) Since the goods in Class 25 do not have a specific use they may also be used for playing golf even though they are not explicitly intended for that purpose. Second, the ‘USA’ component of the mark applied for may be used to designate the geographical origin of the goods or of the undertaking which produces or markets them. The components of the mark applied for are thus descriptive, respectively, of a possible use and of the origin of the goods in question. That finding is valid for the whole of the Community since it is not necessary to have a command of the English language to be able to understand the meaning of those terms. As regards the combination of the two terms, that combination does not contain, in relation to the components taken separately, any additional element capable of giving it distinctive character. (49)

“In particular, although the term ‘golf USA’ does not conform to linguistic rules, in that it cannot be used, as such, in a correct English sentence, it is nevertheless very close and, phonetically speaking, it is identical to certain expressions which are commonly used to indicate that something originates from the United States. (…) Seen from that perspective, the present case is one of mere juxtaposition or lack of a link between the terms, rather than a linguistic ‘error’ strictly speaking. Such a minimal and imperceptible phonetic difference cannot have any influence on the perception created by the two terms which make up the mark applied for and is thus not likely to obscure the message clearly and directly conveyed by those terms.” 50    

It follows that the sign GOLF USA remains devoid of any distinctive character.

De deposant doet nog een beroep op artikel 15 EVRM, maar ook dat wordt afgewezen.

“The applicant maintains, first, that OHIM has already registered several marks which are similar and also comprise the word ‘golf’ placed before or after the name of a town or country. The refusal to register the mark applied for despite OHIM’s practice to the contrary is arbitrary and therefore constitutes an infringement of Article 14 of the ECHR, which prohibits any discrimination. Second, the applicant points out that the mark applied for has already been registered as a national mark in four Member States and in Benelux.”(55)

Het argument gaat niet op, rechtspraak en rechtszekerheid zouden zeer onzeker worden als mogelijk incorrecte eerdere en mogelijk incorrecte latere beslissingen elkaar zouden beïnvloeden.

“It is clear from the case-law that observance of the principle of equal treatment must be reconciled with observance of the principle of legality, according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another. ” (60)

“It should be pointed out that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Nevertheless, registrations already made in Member States are a factor which, without being decisive, may be taken into account for the purposes of registering a Community trade mark. Those registrations may thus provide analytical support for the assessment of an application for registration of a Community trade mark. (…) However (…) such registrations cannot be binding on it in circumstances in which it considers that the sign applied for is in conflict with the absolute grounds for refusal laid down in Regulation No 40/94.” (62, 63, 64)

Ook van inburgering, in a substantial part of the Community, is geen sprake: “It follows that the Board of Appeal did not err in its assessment that the applicant had not met the requirement of proving that the mark has become distinctive in a substantial part of the Community in consequence of the use which has been made of it.” (85)

Het beroep wordt afgewezen.

Lees het arrest hier.