Spam, Spam, Egg, Spam, SPAM and OHIM

October 8, 2006

The unlikely combination of Monty Python and the Office for Harmonization in the Internal Market (Trade Marks and Designs) have robbed Hormel Foods Corporation of sovereignty over the use of the term ‘spam’.

Readers of this Web site will not need to be told about the role of Terry Jones et al, although there may be a few readers who do not know that spam is a food (as well as food snobs who would dispute the suggestion that it is). But the role of the OHIM may be news to you.

Despite widespread use of the term ‘spam’ to describe the e-mails we hate, Hormel Foods has continued to claim that ‘spam’ is their word really and describes spiced ham, although reports that they were prepared to ‘tolerate’ the use of the word for e-mail provided that their product was described as SPAM. In a bold move, Hormel have tried to register trade mark rights over the word ‘spam’ in relation to bulk e-mail and related fields or, in the words of the application, ‘services to avoid or suppress unsolicited e-mails’ and the ‘creation and maintenance of computer software’.

Hormel lives in a world of its own, as anyone witnessing their television advert showing spam (sorry SPAM) as appropriate fare for a romantic dinner can testify, and probably believes the claim that their product springs to the average person’s mind whenever spam is mentioned. But their illusion was not shared by the examiner of their claim. The essence of the judgment, which can be read in full here, is summarised in these paragraphs.

‘The applicant’s contention that the word SPAM would not be understood by a large part of the average English speaking public in the sense given by the examiner, cannot be sustained. Indeed, the Board notes that the term SPAM is not only listed in technical dictionaries as a technical term for ‘unsolicited commercial e-mail’ (see McGraw-Hill Dictionary of Scientific and Technical Terms …) but is also cited in
general dictionaries …. Moreover, it appears from the Internet search carried out by the examiner that the term SPAM is widely used on the internet and is widely known in the sense given by the examiner.
Therefore, to the average individual familiar with the use of computers, inter alia for communication purposes -and a fortiori to professionals in field of activities which make extensive use of communication tools and networking- the expression SPAM unambiguously indicates that the goods or services are intended to guarantee SPAM-free communication. Thus the word SPAM seems particularly suitable to describe a characteristic of the services applied for, which is essential to the user, contrary to the applicant’s contention.’