When are foreign language terms descriptive and hence should be refused trade mark protection?

by: in Law

Recently, the General Court in the HELL coffee case has confirmed that a descriptive foreign language term (German word HELL) can be granted protection under EU trade mark law (Hell Energy v. EUIPO, T-323/20).

The decision of the General Court to allow trade mark protection for the German word HELL (meaning light) is in contrast to the Second Board of Appeal of the EU Intellectual Property Office decision that protection should be refused for the word mark HELL for all the coffee-related products except “malt coffee”. The Board of Appeal had opined that HELL in German means “light”, which can be understood as “light roast” coffee by the average consumer. Therefore, it is descriptive and devoid of distinctive character for most of the coffee-related products.

This is also mentioned in Part B of the Guidelines for examination of European Union trade marks (hereinafter “the Guidelines”). According to 1.2, Chapter 4, Section 4 of Part B, the mark should not be descriptive in “any of the official languages of the European Community, regardless of the size or population of the respective country”.

The Guidelines further point out that consideration must be given to the understanding by the relevant public of terms from an EU language, which is different from the official language(s) of one particular Member State, because under certain circumstances, the relevant public may have “an elementary understanding of the language in question” and the mark at issue is in that language, or the relevant public may consist of specialists who have obtained an understanding of certain technical terms in another EU Member State’s official language.

However, the General Court took an opposite position and set aside the decision of the Boards of Appeal.

Is HELL an objective characteristic of coffee?
With the analysis of the wording “characteristic” in Article 7(1)(c) of Regulation (EU) 2017/1001, they held that it is something “objective and inherent to the nature of that product”, “intrinsic and permanent” (Paragraph 23 of the judgment). It follows the principle set in the Guidelines, in which the descriptive terms are defined as “the case where the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services” (1.1, Chapter 4, Section 4 of Part B).

The General Court disapproved the decision on the grounds that the Boards of Appeal failed to examine whether “light”, as the suggested German meaning of “HELL”, could be seen as an objective characteristic of coffee to the average consumer, which they can perceive immediately without any further reflection (Paragraph 24 of the judgement).

Is HELL perceived as descriptive by the average consumer?
It is controversial to what extent HELL can be perceived by the average consumer as descriptive and would therefore lack distinctive character. The Court analyzed this question from two perspectives.

One is to define the average consumer: Does it only include the everyday consumer? Or will that include professional consumers who may obtain the understanding of the light roasting method? For the general public, will it be limited to Germans? The General Court concluded that professionals should not be excluded from the average consumer and that the assessment should be carried out for the German-speaking public, since the mark at issue has a particular meaning in German (Paragraph 31-32 of the judgement). It should be noted that the Court restricted the scope of the average consumer to those who speak the language of the mark.

The other is to see what is “descriptive” to an average consumer. The Court found that the link between the goods and the mark should be directly perceived by the average consumer, other than any extra intellectual effort to connect (Paragraph 42 of the judgement). In this case, since the Board of Appeal failed to specify the basis and the source of their conclusion, the General Court rejected the clear and direct connection for the relevant public between the contested mark and the characteristic of the products in question.

The court also found that the term “hell Kaffee” is incorrect in German, which should be “heller Kaffee”. Therefore, there is more effort needed for the average consumer to connect “hell” with coffee (Paragraph 46 of the judgement).

Do other countries protect foreign terms as trade marks?
If we look worldwide, the US trade mark law has set a doctrine of foreign equivalents in the examination of trade mark applications. It requires the translation of the foreign words from common languages into English. The doctrine is usually used to determine whether a likelihood of confusion of the average consumer arises, but can also be seen in descriptiveness cases. Where American consumers are familiar with the foreign language so that they would translate the foreign term into English or recognize the English equivalence without any further effort, the doctrine will apply. On the other hand, the doctrine will not apply for the foreign terms that are “arbitrary and fanciful” for the American consumer and market, such as the Japanese term “SEIKO”.

Similarly, the High Court of Australia established in the Cantarella case that the assessment of distinctiveness of a foreign norm is not only processed based on its original meaning in the native language, but also the common understanding by the average consumer of the relevant market.

To conclude, what matters is how the average consumer perceives a foreign term. Determining who the average consumer is and how (s)he will link the norm with the product – as a description or as a brand name – is decisive.

Written by IPKM alumna 2020/2021 Jiayi Wang - More blogs on Law Blogs Maastricht