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EU: Memory, good to remember

Concentration, also known as Match Match, Memory, Pelmanism, Shinkei-suijaku, Pexeso or simply Pairs, is a card game in which all cards are laid face down on a surface and two cards are flipped face up over each turn. On May 23 2017 the Court of Appeal in Amsterdam took a decision on Memory, not with regard to the game itself but regarding the Benelux trade mark Memory of Ravensburger BV. Ravensburger appealed against a decision of the Amsterdam Court at first instance to the effect that a third party could use the word "memory" for online games (with the object to turn over pairs of matching cards). The Amsterdam court was of the opinion that "memory" was used in a descriptive manner so that trade mark infringement was out of the question.

Ravensburger appealed against this decision stating that Memory is a distinctive mark. The Appeal Court agreed; the fact that you have to use your memory to play the game at hand does not make the mark Memory fully descriptive for the registered goods (games in class 28). Furthermore since Ravensburger has used the mark Memory intensively since 1962 the distinctiveness of the marks has increased. In addition, Ravensburger prevented the trade mark from becoming the common name in the trade for the product in respect of which it was registered. Consequently, the point of departure for the Appeal Court is that the Benelux mark Memory is a valid mark. Taking the above into account, the Appeal Court decided that the other side used "memory" in such a way that unfair advantage is taken of, or damage is done to, the distinctive character of the trade mark Memory.

The decision of the Appeal Court does not mention that the EU Court of Justice also took a decision on the distinctive character of the EU mark Memory. In 2011 the fifth Chamber of the Court upheld the decision of the Cancellation Division to the effect that the goods covered by the mark Memory at issue were games for which "the use of the power of memory is [a] means to achieve success". The Cancellation Division also found that the average English-speaking consumer understands the word "memory" to mean the facility by which the mind stores and recalls information. Consequently, the Cancellation Division concluded that the word "memory" was likely to be regarded by the average English-speaking consumer as a description of the goods in question rather than an indication of their commercial origin. Thus, the relevant class of persons will actually understand the word "memory", which relates to the human skill of memorisation, to refer to one of the characteristics of the games for which the mark Memory was registered.

Whether or not Ravensburger used Memory just as intensively in the entire EU as in the Benelux, it is at least remarkable that the decision of the Court of Appeal in Amsterdam differs so much from the decision of the Court of Justice of the EU. After all the Benelux public is supposedly very familiar with the English language. This explains why a trade mark application containing a descriptive English word will easily be refused for lack of distinctive character by both the EU and the Benelux Office. A comparison of both decisions makes clear that a term found descriptive by one court will not always be found descriptive by another, even though both courts normally assume that the relevant public is familiar with the English language.

Perhaps an appeal against the decision of the Court of Appeal in Amsterdam will be filed. If not, the Memory cases might be cases to remember.

Maaike Witteman

V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

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