Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 19/04/2016

Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB

Beselerstr. 4

D-22607 Hamburg

ALEMANIA

Application No:	014351316
Your reference:	WZ98173/AT/SH
Trade mark:	SMARTECH
Mark type:	Word mark
Applicant:	Uniweld Products, Inc. 2850 Ravenswood Road Fort Lauderdale, Florida 33312 ESTADOS UNIDOS (DE AMÉRICA)

1. Summary of facts

The Office raised an objection on 31/08/2015 pursuant to Article 7(1)(b), (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 (Attachment).

2. Extension of time

On 29/10/2015, the applicant requested a two-month extension to the time limit for submitting observations in reply. On 04/11/2015, the Office confirmed the extension and invited the applicant to submit its reply no later than 31/12/2015.

3. The list of goods and services

On 17/12/2015, the Office confirmed that according to the instructions from the applicant the amendments to the specification were completed and the list of goods reads as follows:

Class 9 Refrigeration, heating, ventilating and air conditioning tools, namely, micron gauges, electronic manifolds, temperature probes and psychrometers.

4. Observations of the applicant

The applicant submitted its observations on 16/12/2015, which may be summarised as follows.

The Office does not consider the creative elements contained in the mark ‘SMARTECH’. The mark is unique and more than a mere combination of the terms ‘smart’ and ’technology’.

The word ‘SMARTECH’ does not exist in any language. The word ‘SMARTECH’ is a newly invented word. The expression is written with one ‘t’ in the middle which is an evidential misspelling. The misspelling is not only a visual one but has an effect on the aural pronunciation – the mark will be pronounced as ‘SMAR-TECH’, rather than ‘SMART-TECH’.

The word ‘TECH’, being an abbreviation of the word ‘technology’, sounds quite uncommon when positioned after the component ‘smar-‘. An expression like ‘smart technology’ may exist in English to describe modern developments in technology. However, no one would say or write ‘smart tech’. Therefore, the mark applied for contains a certain degree of creativity that makes it unique.

The Office must take into account prior EU trade mark registrations when it makes a decision on the registrability of a similar mark (C-39, 43/08, paragraph 17). The Office has mistakenly ignored the existence of earlier, similar registrations namely:

the mark ‘SMARTECH’, registration no 6 426 522, ‘SMARTECH’ covering goods in Classes 9 and 16,

the mark ‘SmarTech+’ (figurative mark), registration no 6 429 039 covering goods in Classes 9 and 16,

the mark ‘Genius Smartech’, registration no 12 125 589 covering goods in Classes 8, and 21.

Only when an applicant is relying on unlawful decisions shall the Office not be bound by prior decisions. If the previous decisions do not appear to be unlawful, the Office shall follow them to avoid the violation of the principle of equal treatment.

The Office cannot ignore the fact that the same trade mark has already been registered in the United States for identical goods (a copy of the US register extract no 86/501,739 is enclosed).

5. Decision

Pursuant to Article 75 EUTMR, 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.

Article 7 EUTMR, bearing the title ‘absolute grounds for refusal’, provides in material part that:

1. The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

…

2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability

obtain in only part of the Community.

The signs referred to in Article 7(1)(c) EUTMR are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 27/02/2002, T-219/00, ‘Ellos’, paragraph 28).

Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is applied for may be freely used by all. This provision, therefore, prevents such signs and indications from being reserved for one undertaking alone because they have been registered as trade marks (judgment of 08/04/2003 in Joined Cases C-53/01, C-54/01 and C-55/01, ‘Linde’, paragraph 73).

According to established case-law, to refuse to register a trade mark under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provisions itself indicates, that such signs and indications could be used for such purposes.

According to settled case-law, the descriptiveness and distinctiveness of a trade mark must be appraised by looking at the mark as a whole and by having regard to the way that it is likely to be perceived by potential consumers of the goods or services at issue. For a sign to fall under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question or one of their characteristics (judgment of 03/12/2003, T-16/02, ‘TDI’, paragraph 29; and judgment of 19/11/2009, T-399/08, ‘CLEARWIFI’, paragraph 20, and the case-law cited therein). As regards the requirement of ‘sufficiently direct and specific link between the sign and the goods or services in question’, the Court has stressed in its recent judgment of 25/09/2015, T-591/14, ‘PerfectRoast’, paragraphs 25-26, that in order to be descriptive, it is not relevant that the goods concerned serve directly the activity concerned, but it may be enough that the goods are in sufficiently close relation to the activity concerned.

Despite the applicant’s observations the Office still considers that the mark ‘SMARTECH’ taken into account as a whole is descriptive and devoid of any distinctive character for the goods claimed, namely:

Class 9 Refrigeration, heating, ventilating and air conditioning tools, namely, micron gauges, electronic manifolds, temperature probes and psychrometers.

According to established case-law a mark consisting of a neologism or a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that would be the case where, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (judgment of 12/02/2004, C-265/00 ‘Campina Melkunie’, paragraph 41).

The requirement described above is not met in the present case. The mark applied for ‘SMARTECH’ is made up by combining two common English words ‘SMART’ and ‘TECH’. The conjoining of these two words by merging the last letter of ‘SMART’ and the first letter of ‘TECH’ is only a minor deviation or difference and is easily ignored by the relevant consumer. Such a minor deviation cannot have any influence on the perception created by the expression ‘SMART TECHNOLOGY’ taken into account as a whole. Therefore, the conjoining of the components simply produces a mark that is merely the sum of its parts and is meaningful: the practical application of knowledge in industry to invent useful machines and devices, capable of seemingly intelligent action, or able to react or respond to differing requirements, varying situations, or past events - and/or to solve problems. When applied to the goods covered by the application, the mark ‘SMARTECH’ immediately informs the relevant consumers without further reflection that the goods concerned incorporate and utilise smart technology that renders them capable of seemingly intelligent action. Hence the mark conveys obvious and direct information regarding the quality of the goods concerned and other characteristics such as information on the technology applied by the goods (and on the method of functioning of the goods) in question. The descriptive message contained in the mark in the context of the goods applied for is clear, direct and immediate. The applicant’s argument that the relevant public would perceive the mark as an invented word and would pronounce it as ‘SMAR -‘TECH’, rather than ‘SMART TECH’, is not convincing in the context of the goods in question. As regards the perception of the mark by the relevant public, the Office refers the applicant to the ‘FRUITONIC’ decision of the Second Board of Appeal (decision of 11/01/2008, R 1574/2007-2), in which the Board of Appeal stated as follows (underlining added):

14 The applicant claims that the ‘ONIC’ suffix is frequently used in the United Kingdom with everyday words to create an adjective, or give extra emphasis to the word forming the prefix. Therefore, it claims that the public will see the mark ‘FRUIT’ plus the well-known suffix ‘ONIC’ rather than a combination of ‘FRUIT’ and ‘TONIC’. However, taking into account the context of the goods concerned, the Board finds it far more likely that the ending of the word would be read as ‘TONIC’, rather than ‘ONIC’. This meaning is the most apt and the most likely to be understood by the relevant public when the context of the goods is taken into account.

15 As to the missing letter ‘T’, the word combination uses the letter ‘T’ for both words, as stated by the examiner. Such a visual difference is perfectly customary.

--

16 The fact that two words which are normally written separately have been written together in the mark applied for, does not, on its own, make the mark distinctive. As confirmed by the Court of First Instance in various decisions, a supposedly grammatically incorrect structure of the sign does not affect the assessment of the contested sign (see, to that effect, e.g. judgments of the Court of First Instance of 12 January 2000 in Case T-19/99 DKV Deutsche Krankenversicherung AG v OHIM (‘Companyline’) [2000] ECR II-1, at paragraph 26, and of 26 October 2000 in Case T-360/99 Community concepts AG v OHIM (‘Investorworld’) [2000] ECR II-3545, at paragraph 23). Whether the correct way to write the word combination would be to write the words together, or as separate words, is irrelevant.

The Office considers it very unlikely that the relevant professional public would fail to grasp the descriptive message contained in the mark ‘SMARTECH’ in the context of the goods claimed.

For the reasons explained above the Office considers that from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the mark ‘SMARTECH’ and the goods claimed to enable the public concerned immediately to perceive, without further thought, a description of the goods or one of their characteristics.

The applicant has argued that the mark applied for contains a certain degree of creativity that makes it unique. The Office would like to point out that an EU trade mark is not necessarily a work of invention and is founded not on any element of originality or novelty or imagination, but on its ability to distinguish goods or services on the market from goods or services of the same type offered by competitors. A trade mark is distinctive only if the relevant public understands it immediately as a sign of the commercial origin of the goods and services of the applicant, whereupon the relevant public can distinguish without risk of confusion the applicant’s goods and services from those having a different commercial origin. For the reasons explained above, this requirement is not met in the present case.

The applicant’s argument that the word does not appear in any dictionary is not relevant or decisive either. For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 32).

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground of refusal set out in that Article (judgment of 27/02/2002, T 34/00, ‘Eurocool’, paragraph 39 and judgment of 27/09/2005, T 123/04, ‘Cargo Partner’, paragraph 45). However, the Court of Justice has recognised that the provisions of Article 7(1)(b) and 7(1)(c) EUTMR overlap to a large extent, and it is clear from the case-law of the General Court and the Court of Justice that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (judgment of 12/02/2004, C 363/99, ‘Koninklijke KPN Nederland’, paragraph 86). Given that the mark ‘SMARTECH’ has a clear descriptive meaning for the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature. Therefore, the mark is also devoid of any distinctive character with regard to the same goods within the meaning of Article 7(1)(b) EUTMR.

The Office has taken into account the earlier EU trade mark registrations cited by the applicant. However, these do not change the outcome reached by the Office in the present case. The Office remarks that assessing distinctiveness is not an exact science. According to well-established case-law, while the Office must strive for a coherent practice in assessing signs with respect to absolute grounds for refusal, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T 36/01, ‘Surface d’une plaque de verre’, paragraph 35). Each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. The mere fact that in other cases relating to other trade marks a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature.

The EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (judgment of 11/03/2011, C-51/10 P, ‘1000’, paragraph 73). According to the Court stated (paragraph 74-77):

In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see, by analogy, with regard to Article 3(1)(b) and (c) of Directive 89/104, order of 12 February 2009 in Joined Cases C‑39/08 and C-43/08 Bild digital and ZVS, summary published at ECR I‑20, paragraph 17).

That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.

Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, order in Bild digital and ZVS, paragraph 18).

Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (OHIM v Erpo Möbelwerk, paragraph 45, and OHIM v BORCO-Marken-Import Matthiesen, paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 62).

According to the case-law of the Court (judgment of 12/12/2013, C-70/13 P, ‘PHOTOS.COM’, paragraph 45), the considerations stated above apply even if the sign whose registration is sought as a European Union trade mark is composed in a manner identical to that of a mark in respect of which the EUIPO already approved registration as an EU trade mark and which refers to goods or services identical or similar to those in respect of which registration of the sign in question is sought).

In the present case it has been established that the mark applied for ‘SMARTECH’ is caught, having regard to the goods claimed and the perception of the relevant public concerned, by the absolute grounds for refusal stated in Article 7(1)(b), (c) and Article 7(2) EUTMR. Therefore the mark applied for in respect of the goods covered by the application is incompatible with EUTMR and the applicant cannot reasonably rely on EUIPO’s earlier decisions. The applicant’s arguments alleging breach of the principles of equal treatment and of the protection of legitimate expectations are, therefore, manifestly unfounded.

The Office has also taken into account that the applicant’s trade mark ‘SMARTECH’ has already been accepted by the United States Trade Mark Office. However, this does not change the outcome reached by the Office in the present case. The European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 14 351 316 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Tuula RAJALA

ATTACHMENT Notice of grounds for refusal of application for a Community trade mark (Article 7 CTMR and Rule 11(1) CTMIR) 31/08/2015, 3 pages