Can MEGA, HYPER, ULTRA be protected as a trade mark?
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Decision of the Fifth Board of Appeal at the EUIPO of 24.01.2023, Case: R2088/2021-5, ‚ULTRA‘
Anheuser-Busch, LLC. applied for the EU word mark on 17 October 2002, which was registered on 31 January 2005 under registration number 002895258 for ‘beers’ (Class 32).
Against this registration, Amstel Brouwerij B.V. (‘the applicant’) filed an application for declaration of invalidity on the basis of absolute grounds pursuant to Article 7(1)(b) and (c) of the European Union trade mark regulation (EUTMR) with the EUIPO on 24 June 2020. The applicant submits that the sign has the meaning “to the highest degree”, “very”, “beyond” and will therefore be perceived by the relevant public exclusively as a laudatory and advertising designation highlighting the positive or outstanding characteristics of the goods concerned. The contested sign was therefore devoid of any distinctive character and could not serve as an indication of the goods of a particular undertaking. Moreover, it is purely descriptive of the goods in question, namely ‘beers’. The sign ‘ULTRA’ would indicate beers which are low in carbohydrates, calories and/or alcohol. The term ‘ULTRA’ must therefore be freely available to all manufacturers and/or suppliers of the goods in question.
The Cancellation Division at the EUIPO disagreed with the applicant’s position and rejected its request for declaration of invalidity by decision of 13 October 2021. The Fifth Board of Appeal also dismissed the applicant’s appeal by decision of 24 January 2023, essentially on the following grounds:
- It is true that the term ‘ULTRA’ means ‘extreme’, ‘very’ or ‘beyond’. However, as can be also seen from the Oxford Online Dictionary, the term ‘ULTRA’, when not used as a noun, is a prefix with the aforementioned meaning and which will be combined with another word element, such as ‘ultra-modern’ or ‘ultra-violet’.
- Also in other languages, such as Spanish, ‘ULTRA’ is combined as a prefix with another word element. Therefore, the word ‘ULTRA’ by itself cannot be understood as purely descriptive and laudatory without any further word element.
- This was also in line with the case law of the European Court and the Boards of Appeal at the EUIPO. In all the cases cited by the Fifth Board of Appeal, the word ‘ULTRA’ in combination with another word element had not been considered registrable because it informed the target public that the goods or services claimed went ‘beyond the ordinary’ or were of ‘superior quality’. In this context the Board referred, inter alia, to the following decisions of the European Court and the Boards of Appeal at the EUIPO, in which the following marks were rejected as not registrable:
- 09/03/2015, T-377/13, ultra air ultrafilter, EU:T:2015:149
- 15/10/2019, T-434/18, Ultrarange, EU:T:2019:746
- 16/04/2020, R 483/2020-4, ULTRA thermal precision
- 27/04/2020, R 1453/2019-4, ULTRASUN
- 280/2/2020, R 2086/2019-4, Ultraweiss
- 15/11/2018, R 1152/2018-4, Turbo Ultra
- 24/07/2018, R 1490/2017-5, UltraContact
- 29/06/2018, R 1656/2017-1, ULTRA-LOK
- 12/09/2017, R 877/2017-5, ULTRATEST
- 05/04/2016, R 0004/2016-2, ULTRAHEALTH
- 15/02/2012, R 1447/2011-1, TIP-TOP ULTRA CLEAN
- 11/11/2010, R 1794/2010-2, EFFECTIVE (ULTRA PERFORMANCE)
- 18/01/2013, R 1747/2012-4, ULTRAICE
- 23/02/2009, R 443/2007-4, ULTRAICE
- 12/06/2002, R 105/2001-4, Ultraheat.
- The term ‘ULTRA’ is also not comparable to words such as ‘EXTRA’ or ‘MEGA’, which are in themselves considered to be purely descriptive of goods and services. On the contrary, ‘ULTRA’ must always be combined with another word indicating to what extent or in what respect the goods or services in question go beyond the ordinary or are excellent.
Comment
The decision of the Fifth Board of Appeal is to be agreed with insofar as the term ‘ULTRA’, when used as an adjective, is generally used in combination with another word element. The same applies, for example, to the term “HYPER”. However, just like the words “MEGA”, “HYPER”, “SUPER” or “EXTRA”, ‘ULTRA’ means an ‘enhancement of something’ or ‘going beyond something’ and is therefore generally associated with something ‘positive’ in particular when it appears as a word element in trade marks.
It is at least questionable whether a distinction can be made as to whether the word ‘ULTRA’ or ‘HYPER’ is protectable as a trade mark, depending on whether it is used/applied for as a single word or in combination with another word.
Amstel Brouwerij B.V. brought an action against the decision of the Fifth Board of Appeal to the European Court in Luxembourg on 29 March 2002 (Case T-170/23). It remains to be seen how the Court will rule on this legal issue.