Hormel
applied to the Office for Harmonisation in the Internal Market
(OHIM) for the trade marks but was unsuccessful. It appealed the
original decision not to grant it the trade marks but the Second
Board of Appeal also rejected its application.
Spam is the colloquial term for such unsolicited bulk email in a
homage to a Monty Python sketch in which a café menu contains only
SPAM. Previously Hormel has tolerated the use of the term spam for
email as long as it is capitalised as SPAM for its meat products.
It has recently settled one UK case and lost another in relation to
other trade marks with 'spam' as part of their names.
The application requested trade marks on 'spam' in relation to
"economic consultancy, particularly in combination with network
services; providing of expertise, engineering services and computer
programming; economic consulting services."
The application also applied for the mark for "services to avoid
or suppress unsolicited e-mails" and "creation and maintenance of
computer software; technical consultancy, particularly in
combination with network services; providing of expertise,
engineering services and technical consulting services."
In the first hearing "the examiner stated that the mark consists
exclusively of a descriptive term used in trade, which refers
directly and unequivocally to characteristics of the services
applied for," according to OHIM's report of the case. "When applied
to the services applied for, the mark will be immediately perceived
as a descriptive indication of their object or their intended
purpose. In addition, being primarily descriptive, the mark is
devoid of any distinctive character."
In its appeal, Hormel argued that an average English speaking
person would not necessarily associate 'spam' with junk email.
That argument was rejected by the appeals board. "The
applicant’s contention that the word SPAM would not be understood
by a large part of the average English speaking public in the sense
given by the examiner, cannot be sustained," it said. "Indeed, the
Board notes that the term SPAM is not only listed in technical
dictionaries as a technical term for ‘unsolicited commercial
e-mail’ but is also cited in general dictionaries."
"To the relevant public, the sign would immediately and without
any particular effort of analysis, be understood as referring to
the intended purpose of the services, i.e. to guarantee SPAM free
communications and not as an indication of commercial origin," said
the report. "In the Board’s view, the message expressed by the sign
applied for is clear, direct and immediate to the relevant
consumer."
"The Board considers that the examiner rightly held that the
word SPAM was descriptive and non distinctive for the services at
issue and that it could not for this reason, be registered," said
OHIM's account. "The appeal is dismissed."
