On 3 February 2015, the Brussels Court of Appeal held that the word ‘ius’, which is Latin for ‘law’, is descriptive for legal services and can therefore not be registered as a trade mark.
A Mr De Smet had applied at the Benelux Office of Intellectual Property (BOIP) for the word ‘ius’ to be registered as a Benelux word mark in class 35 (advertising services) and 42 (scientific and technological services). Please note that at the time of the application, legal services were still contained in class 42 under the eighth edition of the Nice Classification. Since the entering into force of the ninth edition in January 2007, legal services are contained in class 45. This should be kept in mind when reading the decision of the Court of Appeal, which focuses on the distinctiveness of the mark for legal services in – then – class 42.
After the word mark had been registered following the BOIP’s accelerated registration procedure, the BOIP ordered the surrender of the mark on the basis that it is descriptive for legal services.
The arguments submitted to the BOIP by Mr De Smet arguing that ‘ius’ constitutes a valid trade mark were rejected. On appeal before the Brussels Court of Appeal, however, the claims of Mr Smet were upheld and the BOIP was ordered to register the word mark in class 35 and 42. In proceedings before the Court of Cassation, the decision of the Court of Appeal was reversed, so that now, the Brussels Court of Appeal (in a different composition) again had to consider the matter.
The Brussels Court of Appeal held that as the word ‘ius’ is Latin for ‘law’ it cannot be registered as a trade mark for, inter alia, legal services for lack of distinctiveness.
Despite the services offered under the mark being aimed at both consumers and professionals, the Court held the relevant public in this matter constitutes the average consumer. The average consumer looking for legal services has a high level of attention as a result of, inter alia, the high cost of these services.
The argument of Mr De Smet that the average consumer will not be familiar with the meaning of the Latin word ‘law’ so that ‘ius’ cannot be held to be descriptive is rejected by the Court. The average consumer looking for legal services will perceive the word ‘ius’ as an indication of the nature or characteristics of these services. The following considerations are decisive for this ruling. Apart from the Latin language having had a great influence on the languages of the Benelux, Latin words are often used for legal services. The average consumer is aware of this. The names of many law firms contain the word ‘ius’, the word is defined in Dutch dictionaries, it generates many law-related hits on Google and many legal terms such as justice and jurisdiction are derived from the word ‘ius’. Hence, ‘ius’ is held to be descriptive for legal services as it is capable of describing the nature or characteristics of these services.
Mr De Smet also argued that the BOIP had failed to distinguish between the classes for which registration was pursued. The refusal to register the mark had instead only been based on just one type of services contained in the trade mark application, i.e. legal services. In this light, Mr De Smet requested the Court of Appeal to order the BOIP to register the word mark ‘ius’, if necessary only for part of the designated services. This argument was also rejected by the Court of Appeal. According to established case law, the Court of Appeal can only order the BOIP to register trade marks in certain classes or for certain services contained in a class in case the investigation on absolute grounds carried out by the BOIP also distinguished between classes or categories of goods or services. Mr De Smet had not requested the BOIP to, in case this would be necessary, limit the registration to only part of the services for which the trade mark had been applied for. Therefore, the BOIP could refuse the registration of the mark for all classes involved on the basis of the argument that the mark lacked distinctiveness.