July 27, 2016
HP fails to FORTIFY trade mark protection
HP fails to FORTIFY trade mark protection

A recent decision of the CJEU has upheld the General Court’s decision that an application to register the mark FORTIFY in Class 9 should be refused.

In 2013, Hewlett Packard Development Company LP ('HP') applied to register the mark FORTIFY as an EUTM for Class 9 software products which related to the detection and prevention of hacking. The application was refused for registration by the examiner under Article 7(1)(b) and (c) of the CTMR, and subsequent appeals by HP to the Board of Appeal, General Court and CJEU were all rejected.

The Board of Appeal found that the word FORTIFY means ‘to strengthen, support or reinforce’ – an assertion that was not contested by the applicant. It was held that this described the intended purpose of the goods in question, namely to strengthen, reinforce or fortify a computer system against outside attacks.  Here the applicant disagreed, arguing that the term does not describe an actual characteristic of the goods in question, as software cannot fortify a computer system, rather it can only protect it from outside threats.  Fortifying a computer system would instead necessitate a physical alteration to the system, which HP claimed software cannot do. HP submitted that this distinction meant that the term ‘fortify’ constitutes a claim to a certain characteristic of the goods, but not a description of such a characteristic, and as such a further mental step would be required before the average consumer would perceive relevant meaning in the mark.  Despite this line of reasoning, HP's position was rejected, and the application has been finally refused.

Based on the arguments presented, the conclusion is perhaps not surprising. The distinction between a claim to a characteristic and a description of a characteristic seems a fine one to make, as does the distinction between whether software protects a computer system by making alterations to that system or by other means. However, taken as a whole, the decision may represent a move towards stricter examination practices at the EUIPO.

It is tempting to speculate whether the application might have fared better had the specification not included such narrow and specific terms about software for protecting computer systems, but if it had instead merely included the broad term ‘computer software’. The breadth of protection would have been the same, but the Board of Appeal’s comments that the function of the goods was clear from the wording of the specification, could have thereby been avoided. It is certainly clear from these comments that  if such specific terms are included in the list of goods then this does appear to inform the examiners and can lead them to a conclusion that a mark is not registrable.

What seems clear from this, and other recent decisions, is that the EUIPO is becoming stricter in its views as to which marks are registrable under Article 7(1)(b) and (c). Brand owners may wish to consider strategies for protecting marks like this in the EU, including filing stylised versions, claiming acquired distinctiveness or applying at national registries where examination practice often seems to be more flexible.


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