Punctuation 'gimmick' cannot be trade marked, says EU court

The Court of First Instance has said that the exclamation mark is not distinctive enough and is unlikely, in the mind of a consumer, to indicate the commercial origin of the goods, which is the function of a trade mark.

JOOP! applied to the Office for the Harmonisation of the Internal Market (OHIM), which operates EU-wide Community Trade Marks, to register a trade mark for a lone exclamation mark and a boxed exclamation mark.

OHIM rejected the application, its examiner saying that the figures lacked the distinctiveness required for trade mark protection. JOOP! appealed the decision but OHIM backed its initial decision.

JOOP! appealed that decision to the European Court of First Instance (CFI). It, though, has agreed with OHIM's verdicts.

"The marks applied for cannot be considered capable of identifying the commercial origin of the goods which they designate," said a CFI statement summarising the judgment. The ruling is not yet available in English.

"The lack of distinctive character arises ... from the fact that the consumer, including a consumer having a high degree of attention, will not be in a position to infer the origin of the goods designated by relying on a mere exclamation mark, which – as it does not have a graphical design which is peculiar to it and which differs from the standard graphical design – will be perceived rather as mere laudatory advertising or as an eye-catching gimmick," said the statement.

The CFI acknowledged that a mark can attain distinctiveness through use by a company and can therefore be protected. But it said that JOOP! failed to demonstrate that this had happened before it applied for the trade mark.

"The Court finds that the documents submitted by JOOP!, through which it seeks to demonstrate that the marks applied for have acquired distinctive character through use in the Community, refer only to the German market," it said.

"Moreover, the only evidence submitted consists of three photos of jeans to which a piece of cloth, or a label, is attached showing an exclamation mark. That evidence is clearly incapable of providing proof of the relevant consumers’ knowledge of the mark applied for before the date on which the application for registration was filed," said the Court statement.

The appeal was dismissed. JOOP! can appeal on points of law to the EU's top court, the European Court of Justice (ECJ).