'Infosecurity' not distinctive enough for trade mark protection, says court

The EU's general court said that the mere fact that the organiser, Reed Exhibitions, claimed that its information security events were the market leader "does not necessarily lead to the relevant public identifying the commercial origin of the Infosecurity exhibition because of its title, as it might do because of a trade mark".

Reed had appealed a decision by the Office for Harmonisation in the Internal Market (OHIM), which is the registrar of Community trademarks, not to allow it to register the name for its exhibitions, trade shows and accompanying magazine and website. OHIM said that the name was merely "descriptive" of Reed's products and was devoid of any distinctive character.

The company had tried to argue that the name had become distinctive in relation to its products by virtue of the way in which it had been used. It presented evidence of event attendance, sales revenue, promotional expenditure, press articles about its events and examples of front covers from its magazine and pages from its website.

However, the court said that this evidence did not necessarily mean that prospective attendees were able to identify who was behind the exhibitions, or to distinguish them from exhibitions on similar topics. This was particularly the case as the term 'infosecurity' was "directly descriptive" of the exhibition's content, the court said.

"According to the case law, the relevant class of persons cannot perceive the goods or service designated by the mark applied for as originating from a particular undertaking where the sign at issue is used in a manner directly descriptive of the type of goods or service concerned," the court said in its ruling.

"That is indeed the case here, since it is established that the sign 'infosecurity' is used in order to designate [Reed's] exhibition dedicated to information security, that is to say, in a directly descriptive way. Consequently, [OHIM] was fully entitled to hold ... that the fact that the applicant's exhibition was successful was not, on its own sufficient to prove that the mark applied for had acquired distinctive character or that it was perceived as a trade mark and not as the title of an exhibition," the court said.

The EU's Community Trade Mark Regulation allows trade mark owners to restrict the use of signs that are identical or similar to the ones that they hold rights to for identical or similar goods or services that the protected mark covers where the public is likely to be confused. However, marks that are "devoid of any distinctive character" should not be registered and can be revoked.

In this case, the 'public' concerned consisted of both "average consumers" and "professionals whose awareness will be higher than average", the court said. However, both of these groups "choose to attend exhibitions or to consult publications mainly on the basis of their content or subject-matter", and in both cases would see Reed's use of the term 'infosecurity' more "as a company name or as a component of another figurative sign", rather than a trade mark, the court said.

"It must be held that, in so far as [Reed] asserts that [OHIM's] finding that the mark applied for is used as a company name is 'factually incorrect', it cannot reasonably claim that use of the mark applied for as a trade name may lead to the acquisition of distinctive character," the general court said in its ruling. "[Reed] cannot rely on the mark applied for having acquired distinctive character as a result of its use as a trade name while disputing, in the case in point, the existence of such use."

"[Reed's] argument that, in essence, the mark applied for could have acquired distinctive character through use as a result of being used as a trade name must therefore be dismissed. In any event, even if that use did take place, such use a trade name does not, contrary to what is claimed by the applicant, suffice on its own to establish that a significant proportion of the relevant public perceives a link between the services delivered under the sign at issue and a particular undertaking," it said.

The court also said that it was irrelevant that Reed had successfully registered 'infosecurity' as a Community trade mark covering the same classes of goods and services some years previously.