[jasode]

>More pertinently "the term is purely descriptive and therefore lacks the distinctiveness required for trademark protection."

As I wrote in my other comment, "open systems" also can be purely descriptive and yet Open Systems seems to be a valid trademark in Europe.

I'm not defending OpenAI. I'm just confused that the rules for allowing trademarks for ordinary words and phrases don't look consistent at the surface level.

[yorwba]

From the background information provided in the court decision:

"as regards the earlier similar registrations relied on by the applicant, the Board of Appeal recalled that those registrations did not represent current practice and case-law and that the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001 and not on the basis of a previous administrative practice."

[onion2k]

The fact that Open Systems hold a trademark on "Open Systems" is less a signal that OpenAI should be allowed to hold "Open AI", and more a sign that Open Systems should start considering changing their name because they'd lose their trademark if someone disputed it.

[gruez]

Does EU court follow stare decisis, given that most member states follow civil law?

[traceroute66]

> a sign that Open Systems should start considering changing their name because they'd lose their trademark if someone disputed it.

IANAL but it AFAIK it does not work like that....

Yes, IN THEORY a registered EU trade mark can be attacked at any time through an invalidity action based on absolute grounds (Article 59(1)(a) EUTMR). If the mark should never have been registered because it was descriptive under Article 7(1)(c) or devoid of distinctive character under Article 7(1)(b), any person can file to have it declared invalid.

But, and its a big BUT...

Even if a mark was registered in breach of Article 7(1)(b)–(d) — i.e., it was descriptive or non-distinctive at the time — it cannot be declared invalid if, through use after registration, it has acquired distinctive character. This is confirmed in the case law, e.g., Adapta Color v EUIPO (T-225/17, 2019), which explicitly references this provision

So "Open Systems" might have started life as a descriptive registration, but if the holder can show that, through years of market use, consumers now associate the term with them specifically (as a badge of commercial origin rather than a generic descriptor), the mark survives.

This is exactly the defense that OpenAI itself tried — and failed — to mount in its application, but the evidentiary burden in an invalidity action against an established mark with years of use evidence can be quite different from a fresh application.

I suspect OpenAI's lawyers told them this but they were instructed to proceed anyway towards the inevitable loss ....

P.S. Is "Open Systems" even registered in the EU as a trademark ? I did a very quick search on EUIPO and could not find it ?

[rdtsc]

> I'm just confused that the rules for allowing trademarks for ordinary words and phrases don't look consistent at the surface level

Precedence in court decisions is weighted more in some places than others. US courts, from my pedestrian observation, are all into "well there is a precedent so we'll follow that". But other countries don't necessarily do that, their courts might be more eager to disregard it and do whatever they feel is appropriate in that situation. You can see it in how OpenAI reacted "The company also cited comparable trademark registrations previously granted by the EUIPO and registrations in more than 30 other countries, including the United Kingdom and Singapore" (well precedents say this and that...)

[munk-a]

Even the US does change policies every once in a while. This is a case where Open Systems was last challenged under the old rule set when it was acceptably descriptive. Since that point standards have changed and, presumably, Open Systems might now be exposed to a similar mark challenge.

[tallytarik]

This sort of rejection is quite common. You can overcome the objection by submitting evidence that your mark has acquired distinctiveness through use. So there will be plenty of trademarks that seem generic/descriptive that have gone through that process.

edit: I originally thought that’s what was being rejected here. It’s not. The court only ruled that “OpenAI” is descriptive. Separately, OpenAI have also submitted evidence of acquired distinctiveness, which will be decided in due course by the trademark office.

[traceroute66]

> I originally thought that’s what was being rejected here. It’s not. The court only ruled that “OpenAI” is descriptive. Separately, OpenAI have also submitted evidence of acquired distinctiveness, which will be decided in due course by the trademark office.

My gut feeling is on them loosing that one.

Stop most people on the street and ask them about "OpenAI". I suspect your average Joe would say "Who ?".

Continue the discussion with "have you heard of ChatGPT" and I suspect the answer would mostly be "Yes, I have".

OpenAI are applying for "OpenAI" in this trademark application. The fact they have a widely known product called "ChatGPT" which they actively market under the name "ChatGPT" does not and should not come into the thought process of any appeals judge.

[pfortuny]

Courts exist, among other things, to specify the rules in ambiguous cases. Rules will be ambiguous always.