Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 30/11/2015

KADOR & PARTNER

Corneliusstr. 15

D-80469 München

ALEMANIA

Application No:	014490122
Your reference:	K63242/2sk
Trade mark:	Anchor
Mark type:	Word mark
Applicant:	AIR PRODUCTS AND CHEMICALS, INC. 7201 Hamilton Boulevard Allentown, Pennsylvania 18195-1501 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 01/09/2015 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 09/09/2015, which may be summarised as follows:

1. The word “anchor” is not a chemical expression, but a nautical term; therefore, the link between the word “anchor” and the goods referred to in the application is not direct.

2. The US Office has registered the applicant’s trade mark.

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.

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).

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.

The sign which has been applied for “Anchor” immediately informs consumers without further reflection that the goods applied for are chemical agents that enable something to be fixed or held firmly in place. Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods in question.

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.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of19/09/2002, C-104/00 P, ‘DKV’, paragraph 21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services 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. Consequently, taken as a whole, the mark applied for – “Anchor” – is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

As regards the applicant's observations, the Office replies as follows:

1. The word “anchor” is not a chemical expression, but a nautical term; therefore, the link between the word “anchor” and the goods referred to in the application is not direct.

The Applicant’s argument would be relevant if the factual use of the word “anchor” were limited only to the nautical field. The Office finds it necessary to explain that even though the term ”anchor” is a nautical term, it is also used in the field of chemistry in order to indicate and describe the characteristics of the goods, namely that chemical agents enable something to be fixed or held firmly in place. By using the dictionary as our source and in relying on its expertise, and based upon the factual use of the word “anchor”, the Office has established the fact that the applied for mark has one connotation that is directly descriptive, and that it is used in that sense with sufficient frequency in the market by several trades. It must be stated that even if a trade mark, with even one connotation, describes the goods and services applied for, the Office must refuse the trade mark’s registration. This statement has been supported by the Court of Justice, the court stated that: 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.)

2. The US Office has registered the applicant’s trade mark.

The Office is obliged to take into account its own trade mark registration practice and make the registration decision on the basis of those facts and circumstances, as well as taking into account any evidence provided by the applicant during the trade mark registration process. While the Office takes note of national registrations there will always be occasions when it has to differ from a line taken by a National Office. This question of the influence of other IP Offices’ decisions has been analysed by the European Court of Justice, and the Court pointed out that: 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.)

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 490 122 is hereby rejected.

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.

Liina PUU