Long registered trademarks can still be invalidated

This comes as no surprise: the figurative mark e*message is not a valid mark for electronic messages. It is entirely descriptive of the service. Apple successfully brought an invalidity action against this EU figurative mark registered in 2000.

So why is this judgment discussed? It is interesting that e*Message Wireless Information Services GmbH is using all possible principle arguments to keep the mark afloat at the General Court.

So what’s the drill with descriptive marks again? A trademark is descriptive if it evokes, without further thought, an immediate, sufficiently direct and specific description of the goods or services or of a characteristic thereof. Such a characteristic does not need to be commercially relevant. The trademark was registered in 2000 after an assessment by EUIPO (then called OHIM). Apple invoked its invalidity much later and therefore Apple had to prove that the trademark had been descriptive on the filing date. Even then the prefix e- or e* was common for 'electronic'. This was and is truly descriptive.

Trademark owner e*Message invoked the principle of legal certainty (Article 17(2) of the Charter) in vain: 21 years later this cannot be reversed, can it? This would have severe commercial consequences, wich should be taken into account too. The Court of First Instance makes short shrift of this: the principle of legal certainty applies just as much to Apple, which only years later saw a reason to challenge the validity on the basis of trademark legislation. One must also be able to rely on this legislation.

This shows once again the added value of a truly distinctive brand. It can be costly to 'load' a trademark. This is why marketers often want a descriptive trademark, that communicates easier and costs less. But if you want to build a valuable IP portfolio in the long run, you better go for a solid distinctive trademark.

Maarten Haak