In Diagnostiko kai Therapeftiko Kentro Athinon “Ygeia” AE v Office for Harmonisation in the Internal Market (OHIM) (Case T-7/10, May 17 2011), the General Court has held that the mark ΥΓΕΊΑ could not be registered as a Community trademark on the grounds that it was descriptive.

The decision focused primarily on the Greek-speaking part of the EU consuming public, in relation to which the term ‘υγεία’ was deemed to lack distinctiveness as it means ‘health’ in Greek. Interestingly, however, the mark is recognised as a well-known trademark in Greece – a fact that was undisputed by the court.

Greek consumers might be surprised by the finding that the term ‘υγεία’ is descriptive in Greek and cannot be registered as a Community trademark. The applicant is a well-known Greek hospital that has been using the term as its company name since 1973 and registered the mark in Greece many years ago. Arguably, the descriptiveness of the mark for Greek consumers is a non-issue given the fame of the ΥΓΕΊΑ mark in the Greek market. The court itself acknowledged that the area of Athens where the hospital is located is
named after the hospital.

The decisive factor in the court’s decision was that the data provided by the applicant insufficiently demonstrated that the mark ΥΓΕΊΑ had acquired distinctiveness, and/or was a familiar brand, in the other Greek-speaking EU member state – that is, Cyprus. In particular, the applicant had submitted data showing that it was present, at least indirectly, in the Cypriot market because it had concluded a share purchase agreement with two local hospitals in Cyprus, and the transaction had received a lot of press attention in both Cyprus and Greece. However, the court was not satisfied that the distinctiveness of the ΥΓΕΊΑ mark had been established for the Cypriot market.

Moreover, according to the court, the fact that the applicant is a hospital and that its services are health-related was a clear indication that the mark was descriptive. The court rejected the applicant’s arguments that the services offered were medical services (‘iatriki perithalpsi’ in Greek), while ‘health’ was only the desired objective.

World Trademark Review (www.worldtrademarkreview.com) is a subscription-based, practitioner-led, bi-monthly publication and daily email service which focuses on the issues that matter to trademark professionals the world over. Each issue of the magazine provides in-depth coverage of emerging national and regional trends, analysis of important markets and interviews with high-profile trademark personalities, as well as columns on trademark management, online issues and counterfeiting.