Whose Mark is number 1?

trademarks; intangible assets; intellectual property rights

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Grand River Enterprises applied for the word mark MARK1 and the figurativetrademark law; intangible assets; intellectual property rights for tobacco related goods and electronic cigarettes in classes 9 and 34. The EUIPO rejected both applications on the grounds of non-distinctiveness (Article 7(1)(b)  CTMR).

The goods applied for are aimed at both average consumers and a professional public.

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The rejection of the marks is based on the meaning of its verbal components, i.e the number “1” is commonly used to refer to “first” or “highest in rank” and the word “mark” is synonymous with “trademark”. The Board of Appeal, therefore, confirmed that both signs refer to the fact that the goods at hand are placed first in the ranking of tobacco brands.

intellectual property

Furthermore, the colours and graphic elements present in the composition of the figurative mark were deemed insufficient to add any distinctive character to the sign. Even though the signs applied for might be perceived by the targeted consumer as advertising slogans, they cannot serve as an indicator of commercial origin for the goods.

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The Applicant appealed the Board´s decision to the General Court arguing that the word “mark” can have several meanings, so it won´t necessarily be perceived to mean “trademark”. And if it does, then it should be seen as imaginative, hence distinctive, since it is unusual to use the word in question to indicate commercial origin.

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The appeal was dismissed. The “several meanings” argument makes a frequent appearance in the replies to Absolute Grounds rejections and is almost never successful. The Court upheld this principle in the present judgement and concluded that the mark solely serves a promotional/laudatory purpose by essentially suggesting the idea of a “number 1 brand” for the goods and is hence devoid of distinctive character.



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