EGC: Community Trademark VOODOO is not descriptive

The European General Court (EGC) decided that the Community Trademark (CTM) VOODOO is not descriptive because the word “VOODOO” will just be seen as a fantasy term with a vague reference to some occult practices by the average consumer (Judgment dated 18 November 2014; Case No.: T‑50/13). Background of the Case and Subject Matter On 15 April 2007, the applicant filed for a CTM at the Office for Harmonization in the Internal Market (OHIM) for the word mark “VOODOO” for clothing. On 10 March 2010 the CTM was registered under the number 5832464. Afterwards, in March 2010, the intervener, Think Schuhwerk GmbH, applied for a declaration that the contested trademark is invalid at OHIM. In its application for a declaration of invalidity the intervener alleged that the contested trademark is descriptive and lacks any distinctive character because the word mark “VOODOO” just describes a specific style of clothing or footwear which is used in the Voodoo religion. Also, the intervener based its declaration on the assumption that the applicant filed its application in bad faith. The Cancellation Division rejected the request for declaration of invalidity. The Board of Appeal (BoA) upheld this decision in second instance. Therefore, the Think Schuhwerk GmbH appealed further to the EGC. Decision of the Court The European General Court (EGC) upheld the decision of the BoA. First, the court pointed out, that the evidence submitted by the applicant does not show that it is reasonable to believe that the mark”VOODOO” will actually be recognized by the relevant consumer as a description for the goods. The relevant public by reference to which the likelihood of confusion must be assessed is composed of average consumers in the EU. This average consumer may associate occult practices and black magic with Voodoo Dolls (see above) which originally come from Haiti or Africa with the word “VOODOO”. But, none of the evidence submitted by the intervener demonstrates that for these practices special clothing is needed or that the actions are bound on predefined rituals, places or events and are only for special persons. As a result of that the EGC upheld the finding of the BoA that the word “VOODOO” will be seen as a fantasy term with a vague reference to some occult practices. Therefore, the trademark is not (directly) descriptive. The EGC also is not of the opinion that the applicant was in bad faith because he knew that the trademark was rejected at the 12 June 2007 by the German Patent and Trademark Office. The court refused this argument because a priority may be lawfully claimed from an application being the subsequent outcome of that application not registered. Finally, the EGC is also convinced that the applicant was not in bad faith because he circumvented the obligation of use of its prior CTM „VOODOO“ for class headings. The EGC is of the opinion, that the applicant applied for the second trademark for specific goods in relation to clothing with the intention to create clearness and preciseness regarding to the scope of protection and not in a fraudulent way.