Absolute Grounds for Refusal: The ABSOLUT CASHMERE Case

The EUIPO Board of Appeal’s (BoA) decision on the trademark application for ABSOLUT CASHMERE underscores the importance of distinctiveness in trademark law. In this case, the BoA upheld a refusal based on absolute grounds, emphasizing that merely descriptive or laudatory terms are insufficient to distinguish goods for the consumer. This case sheds light on how linguistic considerations can affect distinctiveness across different markets within the EU.

Case Overview

In May 2020, the EUIPO’s Fourth Board of Appeal dismissed MCC’s appeal to register the word mark ABSOLUT CASHMERE for goods in class 3 (laundry products, soaps) and class 25 (clothing). The appeal followed an initial refusal by the Examiner, who found that the mark lacked distinctive character under Article 7(1)(b) and Article 7(2) of the EUTMR, which addresses the distinctiveness requirement for trademarks within the EU.

Applicant’s Arguments for Registration

MCC (the Applicant) appealed the refusal, presenting several arguments to establish the distinctiveness of ABSOLUT CASHMERE:

1. Meaning of the Mark: The Applicant argued that even if the term “Absolut” is associated with “absolute” by English-speaking consumers, the phrase itself has an uncommon structure, which could make it distinctive.

2. Multiple Meanings: The words “absolut” and “absolute” have multiple meanings in both English and French, none of which directly connect to the goods in question.

3. Precedent of Other Marks: The Applicant pointed to existing marks containing “absolut,” such as ABSOLUT VODKA, to suggest that the word could be perceived as distinctive.

4. French Registration: The mark had previously been accepted for registration in France, implying that it could have distinctiveness in the EU.

5. Acquired Distinctiveness: MCC claimed that ABSOLUT CASHMERE had gained distinctiveness through its use in the market since 2003, arguing for registration under Article 7(3) EUTMR.

Board of Appeal’s Findings and Reasoning

The BoA rejected each of MCC’s arguments, upholding the refusal based on absolute grounds for the following reasons:

1. Limiting to English-Speaking Public:
   The BoA restricted the distinctiveness analysis to the English-speaking public in the EU, as the mark consisted of two English words. Under Article 7(2) EUTMR, a mark can be refused if it lacks distinctiveness in any part of the EU. The BoA determined that the misspelling of “absolute” as “absolut” would still evoke the same concept, with “absolute” perceived as a laudatory term rather than an indicator of commercial origin.

2. Connection to Goods:
   The BoA found that the mark’s meaning connected directly with the goods listed:

   • For class 25 (clothing), ABSOLUT CASHMERE suggests the product is entirely or predominantly made of cashmere.

   • For class 3 (laundry products), it implies suitability specifically for cashmere items, thus describing rather than distinguishing the goods.

3. Precedent of Other Marks:
   Although the Applicant cited previous marks containing “absolut” or “absolute,” the BoA reiterated that EUIPO is not bound by prior decisions of an Examiner or national trademark office. The mere existence of similar registered marks does not influence the distinctiveness analysis for a new application.

4. Acquired Distinctiveness:
   The claim of acquired distinctiveness under Article 7(3) was dismissed, as this argument had not been raised before the Examiner and could not be introduced for the first time in the appeal process.

Conclusion: Absolute Grounds for Refusal Upheld

The BoA upheld the refusal, confirming that the ABSOLUT CASHMERE mark was non-distinctive for English-speaking consumers, as it did not serve to distinguish the goods from those of other producers. The misspelling “absolut” was insufficient to overcome the impression of “absolute,” which would be perceived merely as descriptive or laudatory. Thus, the BoA concluded that the mark would not be recognized by consumers as indicative of a unique commercial origin.

Key Takeaways from the ABSOLUT CASHMERE Decision

1. Importance of Linguistic Analysis: In EU trademark law, the assessment of distinctiveness can be narrowed to a specific linguistic group within the EU, especially when the mark is composed of recognizable words in that language.

2. Descriptive and Laudatory Terms: Marks that simply describe the quality or characteristics of the goods, even with slight misspellings, are generally deemed non-distinctive and may be refused.

3. Limitations of Precedent: The EUIPO is not bound by earlier trademark decisions, especially those from national offices or regarding different marks, underscoring that each case is assessed on its individual merits.

The ABSOLUT CASHMERE case reaffirms the EUIPO’s commitment to ensuring that only distinctive marks are registered, emphasizing the importance of clear, non-descriptive branding for trademarks in the EU market.