Designation of a technical standard as a trademark

EUTMR Article 7 (1) (c) and Article 7 (1) (b) – DASH

1. The designation “DASH” of the technical standard/protocol/format for streaming data on the Internet constitutes a descriptive indication in relation to goods and services in classes 9, 35, 38, 41 and 42 relating to streaming/transmission/dissemination of data or to one of its characteristics.

2. A trademark that is purely descriptive in a certain branch for a certain technology or standard, is not perceived as distinctive, in the same branch, even if the sign is not descriptive for that precise good or service. (Summaries of Patent attorney Ganahl and Attorney-at-law Saladin)

EUIPO, decision of January 4, 2024 – R 2512/2022-5

 Annotation

The present decision of the Fifth Board of Appeal of the EUIPO dated January 4, 2024 (Official Ref. R 2512/2022-5) concerns the question of assessing the protectability of a sign that conflicts with a designation of a technical standard.

Specifically, EU trademark no. 013926928 “DASH” (word mark) was applied for on April 8, 2015, for numerous goods and services in classes 9, 35, 38, 41 and 42 and entered in the register of the EUIPO on July 29, 2017.

In contrast, the sign “DASH” is the abbreviation for “Dynamic Adaptive Streaming over http”, which is a standard/protocol/format for streaming data over the Internet (ISO/IEC 23009-1).

In the present decision, the Board of Appeal of the EUIPO had assessed to what extent a sign which coincides with the designation of a technical standard can be qualified as a descriptive and non-distinctive indication.

It was assumed that the meaning of ‘DASH’ is only known to the professional public in the IT and communications field, but not to the public at large, i.e. the end users.

The Cancellation Division of the EUIPO at first instance assumed that only some of the goods and services claimed were directed at a professional public, which it assessed on the basis of the specifications of the list of goods/services of the trademark “DASH”.

In contrast, the Board of Appeal is of the opinion that all goods and services of the trademark “DASH” appear to potentially relate to disclosure of data by streaming, transmission, dissemination or otherwise making data available. In this respect, in the opinion of the Board, there is no obvious reason to assume or evidence that the contested goods and services do not to relate to the technical standard, namely “DASH” designating  a standard/protocol/format for streaming data on the Internet.

The Board of Appeal considers that all the goods and services target both the general public and the professional public.

In so far, it is sufficient, if the target professional public may perceive the sign actually or potentially as a description for all contested goods and services in classes 9, 35, 38, 41 and 42, namely that that these goods and services may relate to the streaming/transmission/dissemination  of data or one of their characteristics (nature, kind, purpose of use or the type of standard/protocol/formal used for making data available).

With regard to the lack of distinctive character of the sign “DASH” the Board of Appeal held that the contested EU trademark “DASH” is purely descriptive in the context of the goods and services at question at the date of its filing. When confronted with the contested mark, the target professional public will immediately think that the contested goods and services  are related to the use of the “DASH”  standard/protocol/format for streaming data on the Internet.

Even if the sign “DASH” was not directly descriptive for certain alternative ways of data transmission, still the target public will not consider that the technical standard “DASH” indicates a company origin.

A trademark that is purely descriptive in a certain branch for a certain technology or standard, is not perceived as a distinctive sign, in the same branch, even if the sign is not descriptive for that precise good or service. The reason is that the target public, including the specialised public, understands the sign to be a descriptive indication in that branch and not as an indication of origin.

We understand this to mean that even if the designation of the standard is not descriptive for certain goods and services within that branch, nevertheless, the designation must be denied the distinctive character for those goods and services because of their affiliation with that branch.

Update:

The Board of Appeal of the EUIPO has remitted the case to the Cancellation Division for new examination.

With decision dated September 24, 2024 (Official Ref. 000022722 C) the Cancellation Division has confirmed the decision of the Board of Appeal.

The proceedings are still pending due to an asserted subsidiary claim that the trademark “DASH” has acquired distinctive character through use.

Patent attorney Bernhard Ganahl and Attorney-at-law Julia Saladin, both HGF Europe LLP, Munich.

This article was prepared by Partner & Patent Attorney Bernhard Ganahl and Attorney-at-law Julia Saladin.

The article was published in the 03/2024 edition of the “Mitteilungen der deutschen Patentanwälte” and updated with the latest insights. For more information, visit the website: Mitteilungen der deutschen Patentanwälte – Heft 3|2024