The EU General Court has this week upheld a decision of the OHIM First Board of Appeal to refuse registration of the word NANO in respect of robot-related goods on the grounds that it is descriptive under art.7(1)(c) of the Community Trade Mark Regulation. The court affirmed the previous decision that the word ‘nano’ means ‘extremely small’ and that the public would automatically determine that the mark was referring to something of tiny size.
It is interesting to note that businesses continue to choose to use (and subsequently endeavour to protect) trade marks which ‘do exactly what it says on the tin’ – i.e., they are inherently descriptive of the goods or services provided by the business. Whilst from a commercial view, this serves to assure customers as to the nature of the goods or services offered by the business, from a trade mark perspective, it is often a long (and often costly) battle with the relevant trade mark registry to establish that despite being highly descriptive, these particular goods and/or services have become distinctive through the use made of them.
Simply put, the trade mark must function as a badge of origin rather than as description of the goods and/or services.