Mighty Bright: Not a (Bright) Mark According to General Courtdonderdag, 24 september 2015
The General Court in its judgement of 8 September 2015 dismissed the action installed by Gold Crest LLC (‘Gold Crest’) against OHIM for refusing to register the word mark Mighty Bright in class 11 (‘portable clip-on reading lights and light bulbs’).
OHIM had rejected the trade mark application on the basis that it did not comply with article 7(1)(b) and article 7(2) of the Community Trade Mark Regulation 207/2009 for lacking distinctiveness. Gold Crest appealed to the Second Board of Appeal of OHIM, which dismissed the appeal in its entirety on the same grounds as OHIM.
Gold Crest issued three pleas in law against the decision of the Second Board of Appeal, all three of which were rejected by the General Court.
Gold Crest firstly argued that Mighty Bright does have distinctive character, so that article 7(1)(b) of the Regulation should not have been applied by OHIM and the Second Board of Appeal. According to Gold Crest, the combination of ‘mighty’ and ‘bright’ is unusual because the grammatically correct expression would be ‘mightily bright’. The combination of the descriptive word ‘bright’ and the non-descriptive word ‘mighty’ therefore possesses distinctive character, according to Gold Crest.
The General Court disagreed, ruling that the Board of Appeal had rightly found that the words ‘mighty’ and ‘bright’ mean ‘having or indicating might; powerful or strong’ and ‘emitting or reflecting much light; shining’ respectively. Similarly to the word ‘bright’, the General Court held that the word ‘mighty’ is also descriptive of the goods in class 11 for which the trade mark was applied for. ‘Mighty’ indicates to the relevant public - the average consumer in this case - that the lights and bulbs in question are powerful or strong in the sense that they emit a very bright or very strong light.
The combination of ‘mighty’ and ‘bright’ is also not capable of creating distinctiveness, according to the General Court. The semantic contents of the words were held to be broadly synonymous, so that it would be easy for the public to grasp the meaning of the trade mark applied for without having to take ‘several mental steps’. Despite the combination of the two adjectives being grammatically incorrect, the General Court held the expression does not deviate enough from everyday language for the descriptive message to be attenuated.
The evidence submitted by Gold Crest to prove that Mighty Brighty is perceived by the public as an indication of origin - consisting of, inter alia, printouts of Internet search results, Gold Crest’s catalogues and two reviews from consumers - could also not change the General Court’s view that Mighty Bright is descriptive. This evidence did not show that the perception of the relevant public of Mighty Bright diverted from the descriptive message that the Second Board of Appeal and the General Court had ascribed to it.
Gold Crest’s second plea - the trade mark application was wrongly rejected on the basis of article 7(1)(c) of the Community Trade Mark Regulation - was dismissed because the Second Board of Appeal had not based the dismissal of the appeal on article 7(1)(c).
Interestingly, Gold Crest for its third plea invoked the principle of equality, arguing that before and after its application for the registration of Mighty Bright, comparable marks had been registered. The Second Board of Appeal had failed to state why the trade mark registrations relied upon by Gold Crest were not comparable to Mighty Bright.
The General Court rejected this argument, pointing out that although the principles of equality and sound administration should be taken into account by OHIM when deciding whether to sign is eligible for registration as a trade mark, a trade mark applicant cannot to his advantage rely on the unlawful act (of an ineligible sign having wrongly been registered as a trade mark) that was to the advantage of someone else. The principle of legality should therefore also be kept in mind when determining whether to register a sign as a trade mark.
As the Second Board of Appeal was right to find that Mighty Bright lacked distinctiveness, Gold Crest’s plea was dismissed. The General Court in this light also remarked that some of the allegedly comparable trade marks invoked by Gold Crest were clearly not comparable to Mighty Bright, such as Mighty Software and Mighty Meals, which are also not registered in the same classes as Mighty Bright had been applied for.
With regard to the trade mark Mightybulb, which is registered in class 11, the General Court admitted that this trade mark is similar to Mighty Bright both as regards the signs and the goods covered. However, referring to the principle of legality, the General Court found this could not lead to an annulment of the decision of the Second Board of Appeal.
The General Court dismissed the action of Gold Crest in its entirety. Hence, Mighty Bright is not to be registered as a trade mark. However, intensive use of Mighty Bright might still at some point render the sign to be fit for protection as a trade mark on the basis of having acquired distinctiveness. A mightily bright future might therefore lie ahead after all.
The decision is available here.