Hormel loses bid for spam trademark

Case canned

By OUT-LAW.COM, 4th October 2006

The company behind spicy luncheon meat SPAM has failed in an attempt to register Europe-wide trademarks asserting its right over the term "spam" in relation to unsolicited bulk email.

Hormel applied to the Office for Harmonisation in the Internal Market (OHIM) for the trademarks but was unsuccessful. It appealed the original decision not to grant it the trademarks, 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 trademarks with "spam" as part of their names.

The application requested trademarks 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 emails" 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 email' 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."

See: OHIM's decision (9 page/124KB PDF)

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