Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 17/12/2015

FORRESTERS

Rutland House

148 Edmund Street

Birmingham B3 2JA

REINO UNIDO

Application No:	013879705
Your reference:	B24610EM-DMW
Trade mark:
Mark type:	Figurative mark
Applicant:	Tarmac Holdings Limited Portland House, Bickenhill Lane, Solihull Birmingham B37 7BQ REINO UNIDO

The Office raised an objection on 08/04/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 12/10/2015, which may be summarised as follows:

1. The mark has been used in its current form since 1920’s and although not as much recently the mark has been used in the UK and worldwide.

2. Michael Lomax Witness Statement and Exhibits are included, and further witness statements from Kathleen Calverley and Allen Durning.

3. The mark has been registered in the UK Office.

The Exhibits supplied in the evidence of use of the sign by Mr Lomax in his function as Marketing Communications Manager of Tarmac Cement and Lime limited, are all written in English and may be broken down as follows:

Witness Statement of Michael Lomax:

Along with the presentation of exhibits Mr Lomax provides a history of the companies responsible for the Blue Circle, and also provides references to the registrations already held by the UK registry for the words Blue Circle and the Blue Circle device. The Witness Statement provides a summary of how and where the mark has been used, and shows that for example, web pages, books, professionals and annual reports refer to the mark as a brand. Market Share is also provided, along with exhibition stands used for promotion and examples of use in trade. The evidence submissions may be summarised as follows:

Exhibit ML1, 10 pages: Refers to prior acceptances by the UK registry as far back as 1926 for the stylised device mark Blue Circle, demonstrating that the company name has been in use since the mid 1920’s. A registration is also shown for the simplistic Blue Circle device as protected by the registry in the UK with effect from 24 September 1997.

Exhibit ML2, 6 pages: Refers to 50 prior rights taken as an extract from Trade Marks Live in August 2015. One of these earlier rights is directly comparable with the mark in question in this application, notably the mark protected by the UK IPO in 1997 as referenced above. The remainder of the marks carry predominantly the words Blue Circle, and in some cases additional distinctive matter.

Exhibit ML3, 4 pages: Shows a Wikipedia extract that a third party has created regarding blue circle industries, and also showing the logo as the standalone blue circle, providing history regarding the company.

Exhibit ML4 and ML5, 1 page and 56 pages: Refers to a book written by an independent author Peter Pugh, about the company and its profile throughout the time it has been in existence. The extracts show use of the blue circle standalone, and refer to the history and evolution of the blue circle, and also the overseas development of the country. This mainly shows the circle with other matter, and in the ‘Developments Overseas’ chapter lists many countries, bit of the EU only Spain is listed as an EU country outside the UK.

Exhibit ML6, 40 pages: This extract shows how the company has chosen the symbol as an ‘all-round’ and inclusive service, but everywhere else in the document the mark is shown very much supported by the terms CMC, Cement Marketing Company and Portland Cement.

Exhibit ML7, 4 pages: Superbrands, the independent publishing business has chosen the Blue Circle brand as one of Britain’s strongest brands stating that it is operating in all 5 continents.

Exhibit ML8, ML9 and ML10, 575 pages, 2 pages and 1 page respectively: Covers annual reports and accounts over a range of years since 1977 and through to 2003 showing a vast increase in profits and how the brand has developed throughout this time. ML9 further supports this by demonstrating the increase across the countries and territories worldwide, showing in this case that in the category ‘Europe’ in particular, turnover increased more than ten-fold between 1990 and 1994, although Mainland Europe is not qualified by a break-down of actual territories in this case. Market share appears dominant throughout for the UK market but remains uncertain elsewhere.

Exhibit ML11, 4 pages: Shows that the company is changing ‘mindset’ and adapting by branching out into other fields related to the trade, and the article speaks of ‘Blue Circle’ being a ‘strong, memorable brand’ and also refers to it having ‘clean lines and sharp colours’.

Exhibit ML12, 2 pages: Shows the blue circle as livery on lorries that the applicant confirms are from between 1986 and 2015, and although prominent the circle appears to remain accompanied by other trade indicators.

Exhibit ML13, 6 pages: Shows a number of cement bags and other packaging prominently displaying the blue circle, although in most cases with additional distinctive matter.

Exhibit ML14 and 15, 1 page and 2 pages respectively: Shows use of the blue circle on their stand among other brands at the NEC throughout continued attendance of different events where the logo has been displayed prominently to trade experts and members of the public alike.

Exhibit ML16, 2 pages: Shows toys bearing the sign, due to the brand reputation that the sign carries and therefore the notoriety as a distinctive element, although in both examples it is shown alongside other brands or company names.

Witness Statement of Kathleen Calverley, 3 pages:

This Witness Statement is provided by an ex-employee of the company Ms Calverley who now works for The Cement Society, an independent body in the UK, in her function as Managing Director of The Concrete Society. The Witness reinforces that the market share held by the company is high (covered below in more detail) and provides examples of use such as ‘people would ask for ‘Blue Circle’ when they meant cement’, although as stated below this could also be due to the words blue circle being visible, as it is common in many trades to ask for an item simply by the name it displays on the packaging rather than the sign displayed. A prominence overseas has also been confirmed by The Witness.

Witness Statement of Allan Durning, 3 pages:

This witness statement is provided by Mr Durning in his function as Managing Director of The Timber Buying Group the timber buying group, a company that works independently of other suppliers and establishes the best products in trade for third parties to select and trust for use in their building works. The Witness reinforces the strength of the brand ‘Blue Circle’ and considers it to be top of the few major brands that still exist and are recognised unprompted after much change in the last 30 years of the building materials trade. This in line with his experience in the field since 1982, and also relates to overseas territories where the Blue Circle brand has also been prominent.

Pursuant to Article 75 CTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(3) [CTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) CTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [CTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) CTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) CTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(See judgment of 10/11/2004, T‑396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63.)

As the sign applied for is perceived as descriptive and non-distinctive in the whole European Union, the relevant public by reference to which the absolute ground for refusal must be examined is the whole European Union.

After examining the arguments and the evidence submitted by the applicant the Office concludes that the evidence provided is insufficient to prove that the sign applied for has acquired distinctiveness through use in the whole of the EU, in relation to the goods and services to which the objection was raised.

As far as the probative value of each of the witness statements is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party submitting the documents may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence of the particular case. This is because, in general, further evidence is necessary to establish the degree of notoriety of the sign, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources.

With regards the evidence of acquired distinctiveness submitted by the applicant the following factors have been considered:

territory

The applicant claims that the sign applied for has acquired distinctiveness though use in the whole of the European Union. In support of this claim the applicant shows turnover figures as ‘Mainland Europe’ and in some cases refers to documents broken down by country within the EU. However, in these documents, references are made to Spain, Italy, Denmark, France, Germany, Luxembourg, Sweden and the UK, with further international territories covered that are closely related to the EU, i.e. Norway and Switzerland. Although this covers a number of EU countries it does not cover the whole of the EU as per the requirements of evidence of acquired distinctiveness of such a simple blue circle device. This device would need to demonstrate full EU coverage of use as it would be seen as devoid by the whole of the EU market.

use of the mark

In the majority of the evidence the mark is shown with other distinctive or supporting matter, such as the use of other brand names and company designations or abbreviations, and in some cases the words ‘Blue Circle’. These all add to the overall impression of the circle where displayed and mean that the evidence cannot be assessed purely in relation to the distinctiveness of the Blue Circle device alone. I.e. individuals and trade professionals may attribute the branding to the names at the relevant time, such as Portland Cement, Blue Circle (trading name), Lafarge, etc, but see that they are related to the brand that was called blue circle previously and simply remember their prior ownership as a title, not necessarily as a brand.

Additionally, while in some cases the goods spread wider than that of the main product, in most cases and certainly the majority of the evidence it is the main product ‘concrete’ that the evidence is supplied for, and this is insufficient to demonstrate use for all of the goods and services applied for by the applicant.

market share

The market share of the mark remains high in the UK throughout the years of trading with many branding changes. However, an important factor in this may be that of the initial rationale in setting up the Blue Circle brand as Associated Portland Cement Manufacturers Ltd, as this association was set up to amalgamate 24 cement companies and later 35 cement plants into one brand, and as such it immediately dominated the sector with a 70% and later 80% UK market share respectively in the early 1900’s. Given this scenario, one would expect that due to the majority of the nation’s cement suppliers joining in one allegiance that the association formed would represent the majority of the market in that nation. Elsewhere in Europe the market share is less obvious from the figures, and is unrepresented in actual terms and figures anywhere.

UK national registration

As regards the national decisions referred to by the applicant, the Office notes that this mark was registered in an identical manner to the mark presented for consideration here, and that it was accepted prima facie. However, over time practice changes in all registries worldwide, and it is important that the Office considers the distinctiveness of all marks on the basis of their own merits at the time of filing. In light of this consideration and according to case-law:

the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

conclusion

Overall the applicant has demonstrated that it advertises cement products through the company name Blue Circle or the device but often alongside other marks. The members of the European Union have not been conclusively covered.

The evidence shows strong UK based market share in relation to concrete, the applicant’s main market, and this may be explained particularly initially by the formation of the overall company.

Overall, the evidence provides a good history of the use of the mark but not a sufficiently convincing argument that the evidence has shown that the mark solus has acquired a level of distinctiveness acquired through the use made of it to become distinctive in this field. In its totality therefore the evidence is not sufficient to prove that the sign applied for, has acquired distinctiveness through use in the relevant territory. It must be emphasised that the evidence necessary in order to satisfy the requirements of Article 7(3) CTMR is of a different nature, and definitely more extensive, than in the case of a mere proof of use.

The applicant had to show that, in the perception of the relevant public, the sign applied for has been used so intensively and in such a way as to allow the consumer, through the sign alone, to associate the goods and services at issue with the applicant, instead of regarding it as a decoration of the packaging; the evidence supplied here has predominantly been shown in accompaniment with other signs, so cannot fulfil this criteria. The Office has also been shown no independent survey data that may illustrate recognition of the sign by third parties to link the perception of the relevant consumer to the goods.

Therefore, the Office concludes that the evidence presented is insufficient to demonstrate that, in the eyes of the relevant public, the sign applied for has become distinctive in relation to the goods and services objected to, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) has not been proven.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 13 879 705 is hereby rejected for all the goods and services claimed.

The applicant has requested an extension of time to make further submissions in the event that the objection is maintained. In this regard a further opportunity to file submissions is not granted, since another round of submissions would unnecessarily lengthen the examination proceedings and would constitute discrimination in relation to other applicants who are usually granted one round of submissions. In practice, the only reason to lengthen the examination proceedings is when time extensions are granted when this is appropriate under the circumstances pursuant to Rule 71 CTMIR after the sending of the Office’s first objection letter. The Office considers that in the case at hand an extension of time is not appropriate under the circumstances. The Office’s refusal to grant a further period of time does not contravene Article 75 CTMR as the applicant has had an opportunity to present its comments.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

Richard PRYCE