“Goodbye” to your word mark
The Benelux Court of Justice ruled on 13 May 2022 that the (word) mark "GOODBYE ” followed by a color lacked any distinctive character and was purely descriptive. This is because the relevant public immediately and explicitly understands the intended purpose of the goods without the need for an additional explanation.
The dispute concerned the registration of the word mark "GOODBYE” followed by a color by a Luxembourg company, active in the cosmetics sector, and the counteraction by a German competitor via an application for a declaration of invalidity of that word mark at the Benelux Bureau for Intellectual Property.
The Benelux Bureau for Intellectual Property had initially ruled that the mark lacked any distinctive character and was merely descriptive. The Benelux Bureau substantiated this by saying that there are many cosmetic products on the market that use the word "GOODBYE" in connection with a negative characteristic, such as e.g. coloring of the teeth, coloring of nails or skin, etc.
Furthermore, the Bureau found that the relevant public purchasing a cosmetics product containing the word "GOODBYE" understands that these products will help against getting rid of something and consequently influence the consumer's purchase decision. Therefore, the mark was declared invalid by the Benelux Bureau.
The Luxembourg company appealed to this decision with the Benelux Court of Justice. The Benelux Court confirmed in its judgement that the descriptive character of a trademark must be assessed a) in relation to the goods for which it is registered and b) taking into account the likely perception of the category of goods in question by a reasonably well-informed and reasonably observant and circumspect average consumer.
The Benelux Court upheld the Bureau's ruling by confirming that the frequent use of the word "GOODBYE" in the cosmetics sector in connection with a negative characteristic indicates that the undesirable effect/characteristic is eliminated by the product and that the relevant public, consisting of professionals and average consumers, understands this immediately and explicitly.
The Luxembourg company challenged the Benelux Bureau's decision mainly on the grounds that the absolute grounds for refusal or invalidity were not examined concretely and that the relevant facts and circumstances were not considered, and particularly that the diversity of goods was not assessed.
Although it is settled case-law that the question whether a trade mark is covered by one of the grounds for refusal must be assessed in concrete terms in relation to the goods or services (even if part of the goods or services are concerned), if the same ground for refusal is raised in relation to a category or group of goods or services, the competent authority or court may suffice with an overall assessment and justification.
Such global reasoning is only allowed if there is such a direct and concrete link between the goods or services and if they form a sufficiently homogeneous category that the reasoning can be applied without distinction to the goods or services concerned. In the present case, the Benelux Court found that these conditions were met, since the goods in the classes concerned all relate to cosmetics or care products for skin, nails and hair and are sold under the same conditions and through the same distribution channels. The Benelux Court thus ruled that the disputed trademark was therefore purely descriptive.
With regard to the ground for refusal of distinctiveness of the disputed mark, the Benelux Court noted that different grounds for refusal must be assessed independently of each other, but that there is a clear overlap between the respective scopes of the grounds for refusal.
In particular, a word mark which merely describes characteristics of goods or services is therefore necessarily devoid of any distinctive character in relation to those goods or services. As the goods were found to be merely descriptive in the present case, they were therefore also devoid of any distinctive character.
The contested decision was upheld, and the mark was declared invalid.