Refusal of application for a European Union trade mark

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

Alicante, 27/05/2016

BAKER BOTTS (UK) LLP

41 Lothbury

London EC2R 7HF

REINO UNIDO

Application No:	014511505
Your reference:	076263.0TBA-MS
Trade mark:	GENTLY, QUICKLY AND COMPLETELY
Mark type:	Figurative mark
Applicant:	Technologies Holdings Corp. 3737 Willowick Road Houston, Texas 77019 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/11/2015 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.

On 31/12/2016, the applicant requested and was granted an extension of the time limit in order to submit observations in reply.

The applicant submitted its observations on 14/03/2016 and 15/03/2016, which may be summarised as follows:

1. The trademark in question is not descriptive of the goods and services applied for and meets the minimum threshold of distinctiveness required for registrability.

2. According to the extracts from the websites of the first three dairy equipment suppliers appearing in the Google search results for “Dairy equipment Supplier”, the words composing the mark in question, i.e. “gently”, “quickly” and “completely”, are not commonly used for the description nor are they customary in trade for the goods and services applied for.

3. As long as the registration of a sign as a trade mark is not subject to a finding of a specific linguistic creativity [Case C-329/02P, OHIM v SAT.1], the fact that the word elements in question, even if considered of a simplistic meaning, are not customary in trade, shows that they are capable of distinguishing the goods and services at issue.

4. The representation of the mark as a circular stamp wrapped around by the word elements renders the mark distinctive. The particular arrangement of the words creates a lasting impression of the mark and diverts the average consumer’s attention from the descriptive message of the words.

5. In accordance with Common Practice CP 3, the figurative element of the mark, i.e. the portrayal of a cow against an orange background, is in itself distinctive and clearly recognisable as it dominates the mark due to its size, positioning and colour exaggeration.

6. Even if the cow portrayed in the figurative element could refer to the nature of the products, the goods and services applied for are not all intended to be used directly in relation to animals.

7. The combination of the elements considered as a whole could be perceived as a badge of origin due to the presentation and composition of the mark which is sufficiently far removed from any descriptive and non-distinctive message that could be conveyed by the word element.

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 65).

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 services’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, 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 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 notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (SAT.1 v EUIPO, paragraphs 23 to 27, and BioID v EUIPO, paragraph 60).

‘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).

On this basis, the Office notes that it must be established whether the mark , that contains the expression ‘GENTLY, QUICKLY AND COMPLETELY’, will be understood by the relevant public as descriptive either directly or by reference to one of the characteristics of the goods and services applied for, or if it is reasonable to believe that it might be understood in this way in the future.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T 118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

Moreover, according to settled case-law the relevant consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Thus, in order to assess whether or not a trade mark is devoid of any distinctive character, the overall impression given by it must be considered, which may however mean first examining, in that overall assessment, each of the individual components of which that mark is composed (judgment of 17/11/2009, T-473/08, Thinking ahead, paragraph 31).

In addition, it has to be mentioned that 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).

As regards the targeted specialized public, 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 applies in the case at hand, as the expression GENTLY, QUICKLY AND COMPLETELY’ provides information on the kind and quality of the goods and services in question that function carefully, at a fast speed and by processing the object at issue in its entirety.

As the Office previously demonstrated in its objection dated 17/11/2015, the mark is composed of common English words which create an easily understood whole. The expression does not differ from the general English grammar, is not a lexical invention and does not require any specific thinking to understand its meaning. In particular, the semantic content of each of the words which comprise the sign, is sufficiently clear and precise to create an unambiguous and meaningful expression when these words are combined together: something that it is done carefully, at a fast speed and in its entirety.

Furthermore, the applicant argues that the goods and services applied for are not all intended to be used directly in relation to animals as the figurative element implies. However, an objection also arises for those goods and services that are directly linked to or meant to be used /support the use of those for which the descriptive meaning pertains.

In addition, it has to be stressed that it is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (See judgment of 12/02/2004, C 363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

Article 7(1)(c) EUTMR, when examined in the light of the public interest, is applied when the sign in question refers to characteristics of the goods or services regardless if the sign is used in a descriptive way in the present or if it is reasonable that it might be used in this way in the future. In this sense, the extracts from the websites of the dairy equipment suppliers may show that the words composing the mark in question, i.e. “gently”, “quickly” and “completely”, are not used for the description of the advertised goods and services, as the applicant states, but this cannot prove that these words cannot be used in the present or in the future for describing characteristics of dairy equipment products in general.

In any event, according to the case-law, it is not necessary that the sign covered by the application already be known as being descriptive; rather, it is sufficient that it could be used for such purposes for it to come within the scope of the absolute ground for refusal in Article 7(1)(c) EUTMR. It is thus not necessary to establish proof that that sign is actually used in a descriptive manner (see, to that effect, judgment of 12 January 2005 in Wieland-Werke v EUIPO (SnTEM, SnPUR, SnMIX), T 367/02 to T 369/02, paragraph 40). Consequently, the references to the results of Internet searches on the terms in question must be viewed as being purely illustrative and not as having decisive value for establishing the descriptive character of the mark sought.

Moreover, as the applicant points out, 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 for refusal set out in that article (15/09/2005, T-320/03, Live richly, § 68).

It should be borne in mind that the registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the holder of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 41).

Nevertheless, a basic non-distinctive and descriptive sign can fulfil the function of identification only if it contains elements which set it apart from other commonly used non-distinctive and descriptive slogans (by analogy decision of 13/04/2011, T-159/10, Parallélogramme, § 24 ). This is not the case for the sign at stake, as the common meaning of each of the words comprising the sign is not likely to undergo a noticeable change when they are combined into a single sign. Furthermore, the unambiguous message conveyed by the sign is not diverted by fancy elements that would render the mark distinctive.

In contrast, the true-to-life portrayal of a cow indicates that the goods and services are intended to be used in the agriculture industry and therefore reinforces the descriptive message conveyed by the word elements. The colour variation of blue, as the colour of the typeface, and orange, used in the background of the figurative element, and the alternation from uppercase to lowercase are not sufficient enough to enhance the distinctiveness of the mark.

Based on the aforesaid, the Office concludes that the the plain, direct and unambiguous message conveyed by the mark is apparent as the mark lacks of any secondary or covert meaning or of fanciful/stylized elements that could divert the consumer’s attention from the descriptive and non-distinctive message conveyed by the verbal elements.

For reasons of clarification, EUIPO’s current trade mark practice is reflected in the Office Guidelines. The Convergence Project (Common Practice) 3 is the reference for IP offices, user associations, applicants and representatives on the Common Practice determining when a figurative mark containing purely descriptive/non-distinctive words passes the absolute grounds examination. The principles mentioned in that document are also incorporated in the Office Guidelines.

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 14 511 505 is hereby rejected for the following goods/services:

Class 3 Sanitizing products comprising chemicals and chemical preparations for the cleaning and sanitizing of commercial milking equipment.

Class 5 Disinfectant products for use in animal hygiene.

Class 7 Robotic equipment for the dairy farm industry and parts and fittings therefore; Equipment for the dairy farm industry and parts and fittings therefore.

Class 9 Computer software, hardware and firmware for use in operating robotic equipment; integrated suite of computer software for use in operating robotic equipment.

Class 11 Refrigeration systems for use in the dairy farm industry; Heat recovery systems for use in the dairy farm industry.

Class 37 Repair or maintenance of robotic equipment for the dairy farm industry; repair or maintenance of commercial milking equipment, refrigeration systems and heat recovery systems for use in the dairy farm industry; Dairy facility system installation and service.

Class 42 Dairy facility system design.

The application is accepted for the remaining goods/services:

Class 17 Non-metal tubing used with equipment for the dairy farm industry.

Class 25 Caps; hats; T-shirts; shirts; sweatpants; sweatshirts; wind resistant jackets.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.

Volker Timo MENSING