Refusal of application for a European Union trade mark

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

Alicante, 19/04/2016

S&P LEGAL

29 Austen Road

Guildford Surrey GU1 3NP

REINO UNIDO

Application No:	014487318
Your reference:	T/SP/EC/ENGTECH/150818
Trade mark:
Mark type:	Figurative mark
Applicant:	Engineering Council 5th Floor Woolgate Exchange, 25 Basinghall Street, London EC2V 5HA REINO UNIDO Institution of Engineers of Ireland 22 Clyde Road, Ballsbridge, Dublin 4 Dublin IRLANDA

The Office raised an objection on 08/10/2015 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR 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 02/02/2016, which may be summarised as follows:

1. The consumers would not immediately associated ‘EngTech’ with the goods and services applied for. The consumers must consider a range of possibilities when trying to determine the association between the mark and the goods and services.

2. An average consumers purchasing the goods will not understand the term ‘EngTech’ in a descriptive sense but rather would view this term as unusual and as an indicator of a trade origin.

3. The mark is composed of two separated elements – ‘Eng’ and ’Tech’. The mark applied for is figurative one and the stylisation adds the mark distinctive character. The figurative elements attract the consumer’s attention.

4. The applicant submitted result of the internet search. All references there refer to the applicant.

5. The mark was submitted for different services in Classes 41 and 42 than are services offered in Class 37.

6. The term ‘EngTech’ is not commonly used in common parlance.

7. The applicant noted the amount that was invested into marketing and promotion of the mark in question.

8. The mark becomes distinctive in consequence of the use. The applicant has constantly used the mark since 1965 and has protection under Royal Charter. The applicant submitted following evidence:

   1. Result of google search

   2. Entry from Wikipedia

   3. Amendments to the Charter of the Engineering Council

   4. Engineering Council – Pocket Guide to Professional Registration

   5. Printout from the website of Engineering Council

   6. Printout from EngineeringNews (Institute of Water)

   7. Printout from Landwards Autumn 2011

   8. Printouts with a title ‘The engineering elite’

   9. Advertisements in newspapers

   10. Printout with the article ‘Updating software skills doesn’t guarantee a job’

   11. Printout from www.engcareers.co.uk

   12. Printout with articles ‘UK economic conditions and demographics continue to impact despite growth in new registrations’

   13. Printout with the article ‘Engineering Council welcomes launch of professional technician’

   14. Printout with the article ‘Engineering Council welcomes launch of professional technician’

   15. Printout with the article ‘CIHT to offer recognition for Technicians with EngTech’

   16. Printouts with a title ‘Recognising excellence’

   17. Printout from Landwards Autumn 2013

   18. Printout from Operation Engineer March/April 2013

   19. Printout with the article ‘The value of EngTech’

   20. Printout with the article ‘A professional workforce at every level’

   21. Printouts from The Scotsman

   22. Printout with the article ‘UK plans to create 100,000 engineering apprenticeships’

   23. Printout from FTJ October 2013

   24. Supplement to the Royal Engineers Journal

   25. Printout with the article ‘Technician Registration and Membership’

   26. The article with a title ‘The Sue Percy Column’

   27. The article ‘Engineering Council welcomes Richard Review of Apprenticeships’

   28. Article with a title ‘Chartered engineers pocket £63,000

   29. Printout from Energy World

   30. Printout from www.nce.co.uk

   31. Article with a title ‘Engineering Council revises Professional Standards’

   32. The article with a title ‘Revisions to UK-SPEC’

   33. The article with a title ‘Phase one complete’

   34. The article with a title ‘Congratulations to our latest engineering Registrants’

   35. The article with a title ‘ILP sees major boost in membership’

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.

The applicant requested a new opportunity to submit further observations, but it has not been granted. The Office raised all its arguments in the notice of grounds for refusal of application of 08/10/2015 and the applicant submitted its observations on 02/02/2016. Due to the fact that the Office does not raise new arguments, it does not consider necessary to give the applicant further opportunity to make further submission.

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods:

Class 9 Scientific, optical and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; calculating machines; magnetic cards, smart cards.

The objection is maintained for the remaining goods/services.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

Under Article 7(1)(c) EUTMR, ‘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.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] 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).

1. As regards the applicant’s first argument, the Office notes that the consumers will not perceive the mark separately but in relation to the goods and services for which registration is sought. Therefore, the Office is of the opinion that when relevant consumers will perceive the mark in relation to the goods and services applied for they will understand with no additional mental effort that the goods and services are intended for engineering technicians or for aspirants to engineering technicians and services that are rendered by engineering technicians.

2. Regarding the applicant’s second argument, the Office notes that it reconsidered the objections that have been raised and it waived them in relation to some of the goods in question. Furthermore, the Office decided to maintain objections in relation to the rest of the goods that have been objected. The Office is of the opinion that the relevant consumers will understand the abbreviation ‘EngTech’ because its meaning is explain in the mark (‘Engineering Technicians’). Therefore, the Office is of the opinion that the mark immediately informs consumers without further reflection that the goods applied for are goods including publications, DVD’s discs, software and printed matters that are intended for engineering technicians or for aspirants to engineering technicians.

3. Regarding the applicant’s third argument, the Office notes that the stylisation of the mark applied for is not striking enough to endow the mark with a distinctive character.

4. As regards the applicant’s claim that all results of the internet search refer to the applicant, the Office notes that according to the settled case-law, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

The fact that the mark in question is not allegedly used by the other competitors does not mean that the mark is not descriptive and that it is distinctive. The Office maintains its opinion that the relevant public will not perceive the mark as a badge of commercial origin. The Office claims that the mark merely conveys obvious and direct information regarding the quality, intended purpose and subject matter of the goods and services in question.

5. Regarding the applicant’s fifth argument, the Office notes that it is aware of the fact that the services applied for in Classes 41 and 42 differ from those in Class 37, however, this finding does not alter the assessment of the Office that the mark in question is descriptive and non-distinctive. The Office is of the opinion that also the services applied for in Class 42 can be rendered by engineering technicians and that the services applied for in Class 41 are intended for engineering technicians or for the aspirants to engineering technicians.

6. As regards the applicant’s sixth argument, 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.

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

7. Regarding the applicant’s seventh argument, the Office notes that it does not dispute the applicant’s claim, however, the applicant did not submit any supporting evidence in relation to this claim.

8. As regards the applicant’s last argument and evidence submitted by the applicant, the Office notes the following:

Under Article 7(3) [EUTMR], 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) EUTMR, 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) [EUTMR], 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) EUTMR, 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) EUTMR 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.)

The Office indicated, in its notice of 08/10/2015, that the relevant public was English speaking. As regards the geographical extent of the use of mark, the English-speaking consumers come from the United Kingdom, Ireland and Malta.

A trade mark must be assessed in relation to the services in respect of which registration of the sign is sought and in relation to the perception of the relevant public.

Regarding the evidence submitted:

• The fact that the mark in question is not used by other competitors does not automatically mean that the mark is not descriptive and is distinctive.

• From the submitted articles it is possible to deduce that the applicant registers engineering technicians and grants licences, however, it is not possible to deduce that the applicant itself produces or renders the goods and services applied for.

• Furthermore it is possible to conclude that the registered engineering technicians have a right to use the abbreviation ‘EngTech’ together with their names. Therefore the Office is of the opinion that there are a lot of relevant subjects on the market that are entitled to use such abbreviation when rendering services (mainly those applied for in Class 42).

• The abbreviation would be perceived by relevant public as a standard of quality and intended purpose of the goods and services in question more likely than the badge of commercial origin.

The evidence submitted relates to the United Kingdom and Ireland but none of it relates to Malta.

The evidence submitted indicates that the mark is used by the applicant in relation to some of the goods and services applied for. However, such findings are not sufficient to lift the term above being a merely descriptive term in relation to the goods and services for which registration is sought. Furthermore in relation to some of them the applicant did not submit any evidence.

There is a lack of evidence from independent sources such as trade associations, consumer organisations or chambers of commerce to demonstrate the degree of recognition of the mark on the market. There is no evidence of the turnover generated by the mark except the claim of the applicant. Some advertising has been submitted but is not abundant.

The evidence must demonstrate that a significant proportion of the relevant public for the goods and services for which registration is sought in the relevant territory sees the trade mark as identifying the relevant goods and services of a specific undertaking; in other words, that the use made of the mark has created a link in the minds of the relevant public with a specific company’s goods and services, regardless of the fact that the wording at issue would lack the distinctiveness to make this link had such use not taken place.

In conclusion, there is no evidence that has acquired distinctiveness through use.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 487 318 is hereby rejected for the following goods/services:

Class 9 On-line electronic publications, texts, newsletters, information sheets downloadable from databases or the Internet; computer software and telecommunications apparatus (including modems) to enable connection to databases and the Internet; computer software to enable searching of data; electronic multimedia publications; computer software; magnetic data carriers; pre-recorded compact discs, CD-ROM/DVD's discs, tapes, cartridges and cassettes; pre-recorded videos.

Class 16 Printed matter; instructional and teaching material (except apparatus); printed publications, book, newspapers, journals; printed manuals (hand book).

Class 41 Educational services; organisation of scholarships; providing of training; provision of correspondence courses; arranging and conducting of educational conferences, seminars, workshops and symposiums; arranging and conducting of educational exhibitions relating to engineering and technology matters; provision of engineering and technology instruction courses; educational examination services; engineering tuition services; publication of engineering texts; publication of books, magazines, journals and printed matter; library services; provision of information relating to all the aforesaid services provided online from a database or the Internet.

Class 42 Advising, mentoring and providing guidance in the field of engineering and technology; provision of scientific and technological information; advisory services all relating to the preparation of guidelines and standards regarding the field of engineering and technology; preparation of regulations and guidelines relating to engineering and technology installations and systems; advisory services relating to engineering and technology; provision of home pages on computer networks; provision of information regarding the field of engineering and technology over computer networks.

The application is accepted for the remaining goods/services.

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.

Klara BOUSKOVA