Trademark: assessment of distinctive character of BIO-INSECT Shocker
Facts
The word trademark BIO-INSECT Shocker was applied for on 26/11/2015 and registered on 10/03/2016 as an EUTM for goods in Classes 1 (biocidal products for manufacture; chemical preparations for the manufacture of biocides; chemical additives for insecticides), 5 (including products for destroying vermin, parasiticides; insecticides; biocides; insecticide preparations) and 31.
The registration was later challenged, and its invalidity sought based on the grounds of descriptiveness and deceptiveness.
The General Court of the European Union finally had to assess whether the trademarkmark BIO-INSECT Shocker was invalid and should be cancelled or not. The judgement was rendered on May 13, 2020
Descriptiveness
The Court finds that the meaning of the term ‘Shocker’ refers to something shocking and does not specifically refer to killing or repelling. Therefore, the link between the word ‘shocker’ and the insect-repellent goods is not direct and strong enough to allow the public, without any further consideration, to immediately understand this as a description of the contested goods or their characteristics.
We learn that in an invalidity action, the evidence for the descriptive character of a mark must relate to the time of the application is filed.
In this case, the evidence submitted by the invalidity applicant was insufficient to prove the general use of the word ‘shocker’ for insect-repellent goods at the date of the filing of the trademark application.
Deceptiveness
The term ‘bio’ refers, generally speaking, to the idea of respect for the environment, the use of natural materials, or organic products.
The use of the term ‘bio’ on biocidal goods for which the contested mark is registered establishes a sufficiently serious risk of misleading the consumer as to the purpose of the contested goods, namely that they serve to destroy or prevent pests.
The possibility of a non-misleading use of the mark, even if it is established, is unable to overcome the deceptive character of the sign. Indeed, a deceptive sign must be refused even though it is not used in a deceptive way,
The contested mark was misleading for goods in Classes 1 and 5 identified as biocidal products. The mark is to be annulled as far as those goods and remain for the others.
Anne DESMOUSSEAUX, Founding Partner
Source: 13/05/2020, T 86/19, BIO-INSECT Shocker, EU:T:2020:199
