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Wednesday, 17 October 2007

No win for WinDVD Creator

The IPKat reports on today’s CFI decision in Case T-105/06 Intervideo v OHIM.

OHIM refused to register the mark WinDVD Creator, since it was descriptive. Quite right, said the CFI, dismissing Intervideo’s appeal.

This was not a neologism of the sort that consumers would see as being greater than the sum of its descriptive parts. The goods in question were indeed to be used to create (or at least write) DVDs, and Win would be see as referring to Microsoft’s operating system. Said the court:

It is common ground that Windows, the operating system of Microsoft Corporation, is commonly used in the information technology field by average personal computer users. There is no doubt that among those personal computer users, including even those who use a computer for their personal or professional activities on a daily basis, there are many who are unfamiliar with both the technical details of the functioning of the Windows operating system and information technology language in general. Although it is true that not all personal computer users have such specific knowledge in the field, the word ‘win’ where it appears in relation to computers, and in particular software, will automatically and immediately be understood by the majority as an abbreviation or a shortened reference to Windows. Thus, an average personal computer user will be led to believe that the word ‘win’ refers to the Windows system in the context of information technology.

This is one of those situations that gives the IPKat a headache. WINDOWS is such a strong trade mark that even the first part of it will be seen as referring to Microsoft’s product, yet at the same time, it’s being treated as a descriptive element. It’s rather like GOOGLE: yes, it’s descriptive, but it’s only descriptive of the goods one company which has a virtual monopoly.


Luke Ueda-Sarson said...

Can somebody explain to this trade mark neophyte how Windows succeeded in becoming a (presumably registered?) trademark in the first place, given it is entirely descriptive? The Windows operating sytem is an operating system using, errr, windows, just like the other GUIs out there in the mid-80s did - and still do.

What am I missing?

Regards, Luke

Anonymous said...

Why would you consider that they would be called windows? You cant see through them and a new "window" blocks out what it is in front of. I wou´ld have thought that frames would be a more accurate description.

Luke Ueda-Sarson said...

"Frames" might perhaps be a better description, but that's not what they are called, any more than say a "pineapple" is better off being called something else, since it is neither a pine nor an apple.

But in any case, the primary charecteristic of a window is surely not that it can be "seen through" as you seem to say, but allowing you to "see something". If I talk about a window into your mind, I wouldn't be intimating your mind is tranparent :-) Thus we don't normally talk about a "window in the wall", unless the primary topic is the wall itself; rather we talk about a "window outside" - refferring to what you are observing, rather than the window's construction itself.

Opening up a new window on your computer screen enables a new vista (hmmm, I've seen that round soemwhere lese...) to be seen. The window itself is may have a frame defining it, to be sure, but that is just a structural detail.

Googling around, I see there was litigation with the Windows trademark, and apparently their application was turned down by the USPTO as it was descriptive, but then allowed (no reasons given).

"Acquired distinctiveness" seems to be the term brought up here - the mark may indeed be purely descriptive, but has (since?) acquired distinctiveness. What are the timeframes for this? Is there a difference between UK and US law?

As a chemist, I am reminded of taxol. The compound's name was trademarked long after its widespread usage in the chemical community, forcing everyone to it start calling it something else in the literature, if not in conversation.

Cheers, Luke

Anonymous said...

"Windows" is the name of the operating system, so I think ssaying it's descriptive of the product is a stretch. The fact that a primary GUI feature of the operating system is that it uses windows is a secondary issue.

I guess an equivalent situation is whether a car could ever be named "Windows", "the Ford Windows", for example. Nobody would ever say that Windows was descriptive of a car (except some concept cars, perhaps), even thought windows are an essential part of using a car.


Luke Ueda-Sarson said...

Gerontius, I like your analogy, although I am not (yet) convinced. As you yourself said, the *primary* aspect of the Windows OS is that it uses windows (or at least, that was its primary aspect back in the mid 80s, when most OSs didn't). Except in your concept car, windows are not going to be called a "primary" feature of a car.

So it seems to me a better analogy would be saying it it's like saying "the Ford Hybrid" for a car made by Ford whose primary feature is that it is a fuel-cell/petrol hybrid. Would Ford be able to trademark "Hybrid" in this situation?

And if not, how is this different from the Windows/windows situaton?

Cheers, Luke

Luke Ueda-Sarson said...

Addendum - that should be unlike the old OSs in the 80s that the new GUI OSs replaced.

Cheers, Luke

Anonymous said...

Important clarification - I said primary "GUI" feature, not primary feature, so I think the anaolgy holds true.

In a car, the most important "GUI" features are the steering wheel and the windows. One so you can control it, the other so you can see what you're doing. These equate with the mouse and the windows in Windows.

The primary features of a car are things like the engine and so forth. The primary features of an operating system are the underlying software routines. You don't see either, but that is, actually, what they are all about.

So, if Windows were actually called "Software Routines for Running a Computer", then they might have had trademark issues, just as you might have issues if you wanted to trademark the Ford "Three Stroke Engine".

Of course, probably none of what I'm saying has any basis in TM law since I have only a vague memory of the subject from my course at Queen Mary 7 years ago.


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