EGC: ELITEDISPLAY and ELITEPAD descriptive for the goods designated in the applications

The General Court (EGC) dismissed HP’s appeals in both cases and confirmed that the Community Trademarks (CTM) ELITEDISPLAY and ELITEPAD are descriptive for the goods in respect of which registrations were sought (Judgments dated 22 October 2015; Cases T-470/14 and T‑563/14). Background of the Cases and Subject Matter On 5 November 2012 Hewlett Packard Development Company LP (HP) filed a CTM application for the word mark ELITEPAD (No: 011318284) with the Office for Harmonization in the Internal Market (OHIM) and on 4 February 2013 HP filed a CTM application for the word mark ELITEDISPLAY (No: 011541901). Both applications were sought in Class 9 of the Nice Agreement Classification. The description of goods for ELITEPAD consisted of “computers; personal computers; laptop computers; notebook computers; tablet computers; computer hardware and computer peripherals”, whereas, the description of goods for ELITEDISPLAY consisted of “computer monitors and computer displays”. Both applications were rejected by the examiner in respect of all the goods concerned on the ground that the marks applied for were descriptive and devoid of any distinctive character. The applicant appealed to the OHIM Board of Appeal (BoA). The BoA dismissed the appeal as it found that the sign ELITEDISPLAY consisted of two conjoined word elements, ‘elite’ and ‘display’, and therefore it would be understood as referring to a computer screen or similar piece of equipment that shows information, selected as the best. It found that the two elements were individually descriptive, and the mark consisting of two descriptive elements, was itself descriptive. The appeal for the application ELITEPAD was also dismissed on similar grounds as the BoA found that the sign would be understood by the relevant public as referring to computers or computer hardware containing a panel which is responsive to pressure or touch and which is exclusive or has exclusive and special characteristics or which is of excellent quality. Decision of the Court The EGC dismissed HP’s appeals in both cases. Firstly, the ECG stressed that the descriptiveness of a sign may only be assessed in relation to the relevant public’s perception of it and in relation to the goods or services concerned. The Court held that as it is usual in English to create words by coupling together two words, the combination of ‘elite’ and ‘display’ would not result in a specific meaning different from that conveyed by the two components. In both decisions the EGC held that the word ‘elite’ is used in English to describe not only persons, but also objects. In addition, the word ‘elite’ refers to the notion of exclusivity. Therefore, the signs ELITEDISPLAY and ELITEPAD present a sufficiently close link with the goods designated by the mark applied for, for the signs to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation No 207/2009. The issue of previous decisions of OHIM accepting registration of marks containing the word ‘elite’ is also examined  in both judgements. The EGC states that decisions already made in respect of similar applications should be taken account of. It should also be considered with special care whether they should be followed or not. However, in the present cases the applicant cannot successfully rely on OHIM’s previous decisions as the Board of Appeal has duly given its reasons for not following the previous decisional practice. The EGC holds that the signs ELITEDISPLAY and ELITEPAD were descriptive of the goods in respect of which registration was sought and that they could not, as a result, be registered as Community Trademarks.