To be registered, a trademark must be distinctive and not descriptive. The European community registers trademarks, which must not be descriptive in any European language.
In a recent and interesting case, the CFI ruled that the word mark “MOZART” was descriptive, in that apparently the term is German for chocolate-covered confectionery.
In so doing, the CFI upheld a decision of the OHIM Board of Appeal that the word mark MOZART was invalidly registered for chocolate and confectionery in breach of Article 7(1)(c) of the Community Trade Mark Regulation (40/94/EEC), which prohibits the registration of trade marks which consist exclusively of signs which are descriptive of the characteristics of the goods.
According to the court, the average German-speaking consumer would understand the word as referring to Mozartkugel, a marzipan or praline ball covered in chocolate, rather than information as to the commercial origin of the goods concerned.
Thus Mozart is understood by the average German as not being named after a composer, but rather like Pavlova, as being generic for a type of cake.
Interesting – in Israel, Mozart is used as a label for chocolate desserts and chocolate liquers, and usually the bust of the composer appears on the labelling. I was unaware of this secondary meaning.
Surprisingly, the court also ruled that the applicant could not restrict the description of goods to exclude “Mozartkugeln”, since this would amount to changing the subject matter of the proceedings contrary to Article 135 of the CFI’s Rules of Procedure!
Case: Paul Reber GmbH v OHIM, 9 July 2008.
Without a restriction, is anyone aware of a fair use exception?
For example, could the applicant have got the mark issued by disclaiming fair use for MozartKugeln? Could one use the word “Chelsea” as the name of a bakery and get a trademark, excluding Chelsea buns?
My German isn’t good enough to relate substantively to the Issue. The closest Israeli case I can think of off hand, was when Carmel Mizrachi attempted to trademark Tirosh for grape-juice.