Too broad a brush to get the green light

An application to trademark the term ‘social enterprise’ has sent shivers through the sector, but fear not

Paul Gershlick

Why has a body promoting the use of profits for the benefit of society been so up in arms over recent trademark applications? Answer: Salesforce, the customer relations management software solutions business, has made three European Community trademark (CTM) applications for “social enterprise”.

Social enterprises are a growing body of business organisations that prioritise community, human and environmental wellbeing over profit for shareholders. Examples include the Big Issue magazine and Jamie Oliver’s Fifteen restaurant.

Salesforce’s applications for EU-wide trademarks are in classes nine (IT storage), 35 (advertising), 41 (printed material, programmes, content, conferences and education), 42 (research, development, and software services – such as consultancy and maintenance) and 45 (licensing software and online social networking). The specifications applied for are ­actually much broader than those listed here.

Registered trademarks give exclusive rights over those marks across the territory for which they are registered. Social Enterprise UK is concerned that, if granted, Salesforce could stop any organisation in the EU using the term ‘social enterprise’ if the use is similar to its specification.

Salesforce claims that its application only relates to the IT sector and it is trying to help people by what it calls “social enterprise technologies”.

In its trademark application, however, Salesforce has gone for a very wide specification in those classes. Social enterprises can, of course, be in any sector, including IT, education or programmes. Therefore, in theory, Salesforce’s application could stifle the use of that term.

The reality is that Salesforce should struggle to get the mark registered. It would be surprising if the ­Office of Harmonisation for the ­Internal Market (OHIM), the body that hears CTM applications, would accept Salesforce’s applications.

Specifically, Article 7 of the CTM regulation sets out a number of absolute grounds for refusing a trademark application; particularly marks that are devoid of distinctive character or descriptive.

In 2003, The European Court of Justice reinstated OHIM and the OHIM board of appeal’s decisions to refuse Wrigley the registration of ‘Doublemint’. The court effectively said that if a mark has to be used by others to describe their goods or services, registration should be refused.

Even if OHIM does grant Salesforce’s applications, it is not game over for everyone else. There have been several cases where a registered trademark owner has sought to enforce its rights only to have the mark revoked later for lacking distinctive character or being descriptive: for example, ‘weisse seiten’ (a German generic term for a private telephone directory), “just employment” and “colour edition”.

Even if Salesforce receives the registered trademark it desires, this should not strike fear into the hearts of businesses that simply want to use the term to do good. Whether or not those organisations will be forced to divert money away from their good causes to maintain their right to use a generic term is another matter.