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Green Smoke, Greenworld and Distinctiveness

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10/04/2015

Contrasting decisions involving applications for registrations of the respective marks GREEN SMOKE and GREENWORLD are instructive in highlighting registry approaches to the concept of distinctiveness.

In the GREEN SMOKE case, the applicant had sought a registration in Finland of the mark GREEN SMOKE in respect of electronic cigarettes. The application was refused by the Finnish Trade Mark Office on the ground that the mark lacked distinctiveness, “green” meaning green as either a colour or an ecological concept and “smoke” meaning a cigarette or tobacco. On appeal, the Finnish Market Court stated that in order to be eligible for registration, a mark must be capable of distinguishing the proprietor’s goods from those of others and that a mark that denotes the kind, quality, quantity, use, price or place or time of manufacture of goods shall not, as such, be regarded as distinctive.

The Market Court considered that the word “green” in GREEN SMOKE was primarily referring to the colour “green”. In this case, the mark was referring to electronic cigarettes that were not, in fact, green in colour. With regard to the word “green” in its ecological context, again the connection between the word and electronic cigarettes was unclear – smoking and a clean environment are not, after all, two concepts that do not sit easily together. Thus, in connection with electronic cigarettes, the word “green” was distinctive. Accordingly, the appeal was allowed.

GREENWORLD was a decision of the EU General Court [1]. The applicant had sought to register the word mark GREENWORLD in connection to fossil fuels, gas, electrical energy and their supply. The Examination Division and the Board of Appeal both rejected the application on the basis that the mark consisted exclusively of indications serving to designate characteristics of the goods or services in question and as such was not capable of registration

On appeal, the General Court stated that the word “green” commonly meant eco-friendly and that products described as “green” were generally perceived as products that were less harmful to the environment. This was true of the types of goods in respect of which registration was sought. Taken together, the words “green” and “world” were descriptive of the characteristics of the goods to which they applied.

It was also immaterial, the General Court said, that the mark GREENWORLD had been successfully registered as a Community trade mark in respect of other classes of goods – each case had to be determined according to its particular facts.

Accordingly, the General Court dismissed the appeal.

The cases are useful in highlighting the approach taken by the courts to the issue of descriptiveness. The word “green” in respect of fossil fuels was found to be descriptive, not so in respect of electronic cigarettes.

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[1] Case T-106/14 Universal Utility International GmbH & Co KG v OHIM