Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 03/12/2015

REED SMITH LLP

Von-der-Tann-Straße 2

D-80539 München

GERMANY

Application No:	14 433 916
Your reference:	540148.00011AK
Trade mark:	MADE FOR SEWERS, BY SEWERS
Mark type:	Word mark
Applicant:	KSIN LUXEMBOURG II, S.A.R.L. 1, rue des Glacis L-1628 Luxembourg LUXEMBOURG

The Office raised an objection on 24/08/2015, pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, because it was found that this trade mark is descriptive and devoid of any distinctive character, for the following reasons:

The trade mark you have applied for is not eligible for registration under Article 7(1)(b) and (c) and Article 7(2) CTMR.

The mark applied for consists of the words ‘MADE FOR SEWERS, BY SEWERS’ and is considered objectionable for:

Class 7 Sewing machines.

Class 9 Computer software for controlling the operation of sewing machines.

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26).

Furthermore, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of the trade mark’s individual features (judgment of 09/07/2003, T‑234/01, ‘Stihl’, paragraph 32).

In the present case, the objectionable goods covered by the mark applied for are mass consumption and specialised goods and are mainly aimed at both average consumers and a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be high from the perspective of the specialist consumer, as well as being that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark ‘MADE FOR SEWERS, BY SEWERS’ is composed of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the European Union (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 30).

The trade mark consists of the words ‘MADE FOR SEWERS, BY SEWERS’ with the following meaning:

MADE ‘past tense and past participle of make: to produce (a material thing) by combination of parts, or by giving a certain form to a portion of matter, to manufacture; to construct, assemble, frame, fashion.’¹

FOR ‘appropriate to; designed to meet the needs of; meant to be used in ⇒ these kennels are for puppies’²

SEWERS ‘plural form of sewer: a person or thing that sews’³

BY ‘used to indicate the agent after a passive verb ⇒ seeds eaten by the birds’⁴

The relevant consumer will understand the words as a meaningful expression: something is produced by a person who sews to meet the requirements of the person who sews.

1) Descriptiveness

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (judgment of 20/07/2004, T‑311/02, ‘LIMO’, paragraph 30).

Taken as a whole, the words ‘MADE FOR SEWERS, BY SEWERS’ immediately inform consumers without further reflection that the sewing machines and computer software applied for are produced or designed by professionals of the sewing industry who know the best way of sewing and the desired features of a sewing machine, to meet the needs of a person or thing that sews.

Therefore, the mark conveys obvious and direct information regarding the kind and quality of the goods in question.

It follows that the link between the words ‘MADE FOR SEWERS, BY SEWERS’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) CTMR.

2) Lack of distinctive character

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’, paragraph 31).

The relevant public would perceive the expression ‘MADE FOR SEWERS, BY SEWERS’ as a promotional laudatory message, the function of which is to communicate a customer service statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that they meet the desired needs of a sewer as they are produced or designed by professionals who know the best way of sewing (judgment of 21/01/2010, C‑398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 34).

There is nothing about the expression ‘MADE FOR SEWERS, BY SEWERS’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

Consequently, taken as a whole, the mark applied for – ‘MADE FOR SEWERS, BY SEWERS’ – is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

If you have any observations, they should be submitted within two months from the notification of this communication. If you do not submit any observations, the application will be rejected.

The applicant submitted its observations on 26/10/2015, which may be summarised as follows:

1. The sign in question is suggestive or allusive, does not describe any characteristics of the goods in question.

2. The word ‘SEWER’ has several meanings. Thus, the term ‘MADE FOR SEWERS’ does not describe the kind of the goods and the term ‘BY SEWERS’ does not describe the quality of the goods in question.

3. The expression is a play on words, imaginative and easy to remember and it has a suggestive rather than a clear and straightforward meaning. Thus, it has a minimum degree of distinctive character.

4. The consumers of the goods in question are specialised and attentive public whose level of attention is high.

5. As the expression is only allusive, it cannot be perceived as a promotional laudatory message.

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(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

Under Article 7(1)(c) CTMR, ‘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’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C 329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

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 sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

With regard to the applicant’s observations, the Office responds as follows:

1. The sign in question is suggestive or allusive, does not describe any characteristics of the goods in question.

The Office disagrees with the applicant’s finding that the term ‘MADE FOR SEWERS, BY SEWERS’ is suggestive or allusive and does not have a descriptive meaning in relation to the goods in question. The Office notes that the term is composed of English words which in combination are entirely meaningful. When perceived in relation to the goods applied for, they immediately inform consumers that sewing machines and computer software for controlling the operation of sewing machines are produced or designed by sewing industry professionals to meet the desired needs of a person or thing that sews. Therefore, the term seen in combination with the goods claimed conveys an obvious and direct information regarding the kind and quality of those goods. This message will be perceived without the need for intellectual analysis and time to reflect over the mark.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

2. The word ‘SEWER’ has several meanings.

A trade 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 for the purposes of Article 7(1)(c) [CTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, 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 …

(See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.)

The words ‘MADE FOR SEWERS, BY SEWERS’ can be easily perceived by the English-speaking part of the relevant public. As regards the applicant’s argument that ‘SEWER’ has several meanings, it is true that this word might have other meanings as well, however in one of the possible meanings it is entirely descriptive and makes the signs entirely descriptive.

The term ‘MADE FOR SEWERS, BY SEWERS’ is made up of an entirely understandable combination of words which leads to a meaningful expression that, seen in relation to the goods concerned, imparts an immediate and obvious message, namely, as the term clearly implies, that the goods applied for are produced or designed by professionals who are experts in the field of sewing and know the desired features of a sewing machine in order to meet the desired needs of a person who is sewing.

For a trade mark to be refused registration under Article 7(1)(c) CTMR, 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.

(See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

3. The expression is a play on words, imaginative and easy to remember and it has a suggestive rather than a clear and straightforward meaning. Thus, it has a minimum degree of distinctive character.

It is clear from the wording of Article 7(1)(b) that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (see judgment of 15/09/2005, T-320/03, ‘LIVE RICHLY’, paragraph 68.) It is also well established that it is not necessary for a slogan to display imaginativeness or creativity which would create surprise, or make a striking impression for it to achieve the minimal level of distinctiveness required under Article 7(1)(b) CTMR (see judgment of 21/01/2010, C-398/08 P ‘Vorsprung durch Technik’, paragraph 47).

Article 7(1)(b) makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) CTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade  mark.  Due to the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) CTMR (see also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR). The Office considers, therefore, that it is highly unlikely that the consumer could perceive it as a badge of origin to distinguish the applicant’s goods.

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (judgment of 29/04/2004, joined cases C 456/01 P and C 457/01 P, ‘Henkel’, paragraph 38).

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words, imaginative and easy to remember and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (see judgment of 15/09/2005, T-320/03, ‘LIVE RICHLY’, paragraph 84).

In the present case, the relevant public will not fail to immediately grasp the banal message of the slogan applied for and will understand that the goods in question are produced or designed by professionals who know the best way of sewing and they can meet the desired needs of a sewer. The message of the slogan applied for is immediately understandable and does not require any further interpretation, thought or analysis on the part of the relevant public, which is led to associate that sign instantaneously with a promotional message.

4. The consumers of the goods in question are specialised and attentive public whose level of attention is high.

The goods applied for in Class 7 are sewing machines that can be used by somebody at home who knows or wants to learn sewing as a hobby or by professionals in a tailor shop or clothing factory. The relevant consumers for the sewing machines are both average consumers and a professional public.

Regarding computer software for controlling the operation of sewing machines applied for in Class 9, these are technical goods and can be used by manufacturers of sewing machines. These specialised goods are aimed at a specialised and attentive public whose level of attention is high.

In addition, in view of the nature of the goods in question, even if the awareness of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C 311/11 P, ‘Smart Technologies’, paragraph 48). This is the case at hand. The relevant professional public will immediately understand the descriptive meaning of the sign applied for and will not see anything unusual in the term applied for.

5. As the expression is only allusive, it cannot be perceived as a promotional laudatory message.

Given that the mark is not allusive and has a clear descriptive meaning in relation to the goods applied for, as demonstrated above in this decision, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

The Office maintains that the relevant public here is likely to see the expression ‘MADE FOR SEWERS, BY SEWERS’ as a clearly laudatory. There is nothing about the expression that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

The relevant public would perceive the expression ‘MADE FOR SEWERS, BY SEWERS’ as a promotional laudatory message, the function of which is to communicate a customer service statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that they meet the desired needs of a sewer as they are produced or designed by professionals who are experts in sewing (judgment of 21/01/2010, C 398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C 311/11 P, ‘Smart Technologies’, paragraph 34).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, the application for Community trade mark No 14 433 916 is hereby rejected for all the goods claimed.

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.

Mustafa IMAMOGLU