The Oilgear Company, represented by our firm, applied to the Community Trademark Office to register the OILGEAR (Stylized) trademark to cover hydraulic pumps, hydraulic motors and hydraulic machine tools in Class 7 and hydraulic motors for land vehicles in Class 12.

The Examiner refused the application because the mark consisted exclusively of the words "oil" and "gear" which "may serve in trade to designate the kind or the characteristics of the goods, namely an equipment working with or using oil". In response to the applicants' further arguments, the Examiner noted that the stylized presentation of the mark was not enough to make the mark distinctive.

The Applicant appealed the Examiner's decision, arguing that the Examiner had improperly dissected the mark into its component parts, rather than considering the mark as a whole, that, taken as a whole, the OILGEAR (Stylized) mark does not describe the goods covered, and further, the stylization of the mark makes it distinctive when viewed in its entirety. The Applicant also argued that the mark had acquired distinctiveness as it had been in use in the European Community for at least 50 years.

On September 22, 1998, the Second Board of Appeal upheld the appeal. The Board held that, in order to determine whether a mark is distinctive, the mark must be considered as a whole, and that, when taking into account the stylization of the mark, the mark was sufficiently distinctive. The Board found that OILGEAR (Stylized) was merely suggestive of the Applicant's goods but not descriptive of those goods, noting that companies have a legitimate interest in using trademarks that suggest a connection to their goods or services, and that these suggestive marks do not prevent other traders in the field from promoting their goods or services. The Board did not consider the Applicant's arguments concerning acquired distinctiveness.

This decision is important in holding that an Examiner may not improperly dissect a mark into its component parts when considering whether the mark is distinctive, as well as in the Board's finding that the mark was merely suggestive of the goods.