A Canadian company Equity Cheque Capital filed an application with the European Union Intellectual Property Office (EUIPO) for registration of their insurance services related Trademarks. They filed the application in August 2016.
The applied-for mark consists of the words ‘Diamond Card’ which was italicized, emboldened and in black font. It also contains an illustration of a black diamond on the left.
In their initial decision, the EUIPO denied registration of applied-for Trademarks, because it does not contain any distinctive character. According to their decision, a Trademark should contain the distinctive character(s) to be registered. However, Equity Cheque Capital appealed against the decision in July 2017 which was again rejected by the Fourth Board of Appeal of the EUIPO on same grounds.
According to the decision by The Fourth Board of Appeal, there were several reasons to think the mark was devoid of any distinctive character.
The applied-for mark consists of expression which was part of basic English vocabulary. Furthermore, the expression ‘Diamond Card’ did not indicate the services which would be covered by it.
Rather it indicates a statement of value and as a mere promotional message with respect to those services. The company again appealed against the decision at the General Court.
On 17th January 2019, the General Court upheld the prior decision of the European Union Intellectual Property Office (EUIPO) and rejected Equity Cheque Capital’s proposed mark, ‘Diamond Card’.
They ruled that the public would relate ‘Diamond Card’ to luxury, wealth and value. Furthermore, the expression is similar to ‘gold card’ and is therefore not original. In addition, it does not contain any unusual element to make it distinctive. The Court ordered the company to pay the costs.