Ruling of the general court of the European Union, 22 January 2015, WET DUST CAN’T FLY
The Community trade mark WET DUST CAN’T FLY was registered on 16 January 2009 in the name of REXAIR for products and services in classes 3, 7 and 37 relating to cleaning and maintenance.
In January 2011, the company PRO-AQUA filed an application for the declaration of partial invalidity of the above-mentioned trade mark.
This application was based on Article 7, paragraph 1, sub-paragraphs b) and c) of the European regulation 207/2009 relating to the absolute grounds for refusal of trade marks with no distinctive character (sub-paragraph b)) and of trade marks composed exclusively of signs or of indications which could be used, commercially, to designate the type, quality, quantity, intended purpose, value or geographical origin of the product or service, the time of production of the product or of delivery of the service, or any other characteristics relating to the product or service.
The General Court of the European Union confirmed the position of the cancellation division and of the Board of Appeal on the grounds that:
- The trade mark WET DUST CAN’T FLY does not describe the products and services covered to the extent that this expression does not describe how these products and services function, since they do not aim to wet dust and do not refer either directly or indirectly to dust. Consequently, a consumer will not purchase such products and services “with the aim of preventing dust from flying by wetting it”.
- In light of the preceding argument, the trade mark cannot be deemed to describe how the cleaning machines and tools function and as such there is no need to ensure the availability of this expression for competitors.
- The concept of “wet dust” is physically impossible, since dust is no longer dust once it is wet. In fact, the juxtaposition of these two terms “gives the concept a fanciful and distinctive character”. As a result, the expression WET DUST CAN’T FLY “calls for a certain effort of interpretation by consumers, who will not immediately associate it with the products in question”, thus giving this expression “originality and resonance, which trigger a cognitive process in the mind of the relevant consumer”.
As a result, the registration of the trade mark was maintained.
The question arises, however, as to the relevance of the arguments made by the claimant. Indeed, a cancellation action on the grounds of the deceptive nature of the trade mark could have had more chance of succeeding, to the extent that this trade mark leads consumers to believe that the products and services in relation to which it is registered are aimed at wetting dust, which is not the case here according to the Court’s arguments.
Contact : Marion LAPERRIERE