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The Trade Marks and Designs Registration Office of the European Union
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OHIM's Cancellation Division has ruled that the Community trade mark “POOLSTORE” is invalid, in a case involving two UK companies with similar names, who were both selling swimming pool supplies.
The CTM was registered in 2007 by PoolStore UK Ltd, based in Hampshire, for a range of goods including swimming pools and swimming pool supplies in classes 1, 6, 8, 11, 19, 22 and 28.
Later the same year, the similarly-named, UK Pool Store Ltd, based in Maidstone in Kent, filed a request for a declaration of invalidity against the CTM on absolute grounds, in particular Article 7(1)(b), (c) and (d) CTMR in conjunction with Article 53(1)(a) CMTR.
The Kent-based company argued that the trade mark “POOLSTORE” consisted of the plain conjoined English terms “pool” and “store”, which meant “swimming pool” and “establishment where merchandise is usually sold, usually on a retail basis” respectively. The trade mark therefore consisted of a combination of terms referring to an establishment where swimming pools and their accessories were sold.
The terms conjoined were hence claimed to be descriptive of characteristics of the goods the trade mark was registered for without any distinctive character, contrary to the prohibitions of Article 7(1)(c) and (b) CTMR.
In addition, the applicant claimed that “POOLSTORE” was a term already in use in trade to identify establishments where goods for use in relation to swimming pools were sold by the time the sign was applied for as a Community trade mark. As a consequence, the trade mark was also in breach of the provision set out by Article 7(1)(d) CTMR.
The CTM owner, rejecting these arguments, said the CTM, when viewed as a whole, formed an unusual syntactical juxtaposition and would not be clearly perceived as an expression that characterised the goods.
Furthermore, the attentiveness of the relevant consumer was high when it came to swimming pool accessories as these are not everyday consumer goods. The applicant had hence failed to prove that the trade mark in question consisted of terms of generic use in relation to the goods in question.
The CTM proprietor also submitted that the trade mark had acquired distinctiveness through use of the mark “POOLSTORE” for a relevant period of time at its filing and said that account must be taken of the differences between American and British English usage of the term “store”.
The Cancellation Division, ruling in favour of the invalidity applicant on the question of “descriptiveness” said that it was sufficient for the refusal of a trade mark if one of its possible meanings had a descriptive content in accordance with Article 7(1)(c) CTMR.
Taking into consideration both the meanings conferred to the sign and the goods it protected, “POOLSTORE” would be perceived by the relevant consumer without any additional mental effort, as an indication of a type of establishment retailing swimming pools and accessories. Contrary to the proprietor's argument, the combination of terms created a grammatically correct expression in English, conveying a meaning which was immediately perceptible.
It was also reasonable to assume that the consumer visualising the sign in connection with swimming pools and accessories, would recognise characteristics of the goods and would be unable to recognise it as a distinctive sign, which would identify a particular undertaking.
On the defence that “POOLSTORE” had acquired distinctive character through use the Office found that the witness statement, figures and website extracts provided did not allow any conclusion in respect of market size, market share or the views of the interested trade circles and were insufficient to show recognition of the sign among the public of the relevant English speaking territories, i.e., the UK and Ireland, where the term was clearly descriptive.
Consequently, the Cancellation Division ruled that the applicant had succeeded with the request for a declaration of invalidity on absolute grounds and the application for invalidity must be upheld for all the goods registered.