CANCELLATION No C 22 187 (INVALIDITY)

 

Distintiva Solutions S. Coop. Pequeña, Calle Avendaño, 23- BA, 01008 Vitoria-Gasteiz (Araba/Álava), Spain (applicant), represented by Protectia Patentes Y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)

 

a g a i n s t

 

Makeblock Co., Ltd, 4th Floor, Building C3, Nanshan Ipark, No.1001 Xueyuan Avenue, Nanshan District, Shenzhen, Guangdong Province, China  (EUTM proprietor), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative).

 

On 19/05/2021, the Cancellation Division takes the following

 

 

DECISION

 

1.   The application for a declaration of invalidity is rejected in its entirety.

2.   The applicant bears the costs, fixed at EUR 450. 

 

REASONS

The applicant filed a request for  a declaration of invalidity against European Union trade mark No 14 877 013   (figurative mark) (the EUTM), filed on 04/12/2015 and registered on 17/03/2016. The request is directed against all the goods and services covered by the EUTM, namely:  

Class 6: Girders of metal; sleeves [metal hardware]; alloys of common metal; props of metal; poles of metal; laths of metal; posts of metal; sheets and plates of metal; steel sheets; aluminium.

Class 9: Couplers [data processing equipment]; remote control apparatus; computer programs [downloadable software]; electronic sensors; printed circuit boards; teaching apparatus; detectors; microprocessors; electronic publications, downloadable; integrated circuit cards [smart cards]; inductors.

Class 41: Organization of exhibitions for cultural or educational purposes; publication of texts, other than publicity texts; publication of books; publication of electronic books and journals on-line; writing of texts, other than publicity texts; academies [education]; education information; services of schools [education]; coaching [training]; practical training [demonstration]; teaching; organization of competitions [education or entertainment]; educational services; arranging and conducting of workshops [training]; instruction services; arranging and conducting of symposiums.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c)(e) and (g) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark is composed of terms used generically in society to tell someone to build something compound by pieces. It contends that the expression ‘make a block’ is widely used and gives examples of website on which the word ‘blocks’ or instructions ‘how to make blocks’ is used in connection to toys. It also refers to the meaning ‘make a block’ in the sense of giving directions in urban areas. It argues that an English-speaker is used to the expression ‘make a block’ and, therefore, the mark is devoid of distinctive character and it is also descriptive. It refers to the meaning of the words ‘make’ and ‘block’ and argues that the mark as a whole will be understood as ‘to produce pieces or a group of things considered together’. It puts forward that for Article 7(1)(b) EUTMR to apply the mark does not have to follow the correct grammar rules, if it can be considered to be common in advertising language. The contested mark, according to the applicant, only misses the article ‘a’ to be a grammatically correct expression. The contested mark lacks distinctiveness and is descriptive in relation to the contested goods in Class 6 because these goods are made of pieces that form a block, the goods in Class 9 are result of joining pieces in a block, the software products are made of blocks and the services in Class 41 will ‘use all the mentioned services to develop said activity. All the material will be related in learning robotic’. It also claims that, as regards the services, the mark informs that material is given in blocks of information enclosed in a file and is directed to teach how to program (using blocks). It concludes that the contested mark is the regular way used in every case for describing the way in which the designated products or services are made or gathered. Furthermore, the applicant claims that ‘make a block’ is a common instruction in ‘snap programming language’ and gives examples from the internet of the use of the command in software ‘Scratch’. The applicant argues that the applicant’s software is also based on Scratch. The figurative element of the mark acts as a letter ‘o’ and also represents the union of pieces to build or make something and, therefore, it does not provide distinctiveness to the sign. As regards Article 7(1)(e) EUTMR, the applicant argues that the words ‘make’ and ‘block’ and the figurative element give a substantial value to the sign, since they indicate to the consumer that the product is capable of doing whatever, it indicates directly the kind of product sold and the figurative element provides a visual concept of the product sold. Finally, as regards Article 7(1)(g) EUTMR, the applicant puts forward that given the clear message transmitted by the mark, that is ‘do something with blocks’ or ‘build a block’, the mark will deceive consumers as regards goods that are not related to blocks.

The applicant submitted the following documents to support its arguments:

• Annex 1: excerpts from www.pinterest.es concerning ‘block activities for preschoolers’. The links contain ideas or products for educative games, some of them concerning blocks. The expression ‘makeblock’ or ‘make a block’ or any activity that would involve making blocks cannot be found among them.

• Annex 2: an excerpt from http://techland.time.com containing an article entitled ‘The Smartest Toy Blocks Ever made: Cubelets’, dated 11/01/2012. The expression ‘makeblock’ or ‘make a block’ is not used.

• Annex 3: an excerpt from https://handsonaswegrow.com containing an article (undated) entitled ‘Blocks of Fun! 47 Block Activities for Preschoolers’. References to block games and activities involving playing with blocks can be found in the article but not the expression ‘makeblock’ or ‘make a block’.

• Annex 4: text from https://entertainment.howstuffworks.com entitled ‘How to Make Wooden Blocks’ that contains instructions on how to create toy wooden blocks. The text is not dated but contains a copyright note mentioning 2018.

• Annex 5: an excerpt from www.primaryscience.ie, seemingly a website for teachers, concerning instruction on how to organize a classroom activity consisting of constructing concrete blocks.

• Annex 6: an article from ‘The Daily Dot’ dated 08/01/2015 entitled ‘The Toy Blocks That Will Make Your Kids Robotics Geniuses’ concerning toy cubes that can be used to build programmable robots.

• Annex 7: a printout from www.urbandictionary.com according to which ‘make a block’ is an instruction to drive around the block.

• Annex 8: an excerpt from Wikipedia concerning the programming language ‘Snap!’ which is described as free, block- and browser-based educational graphical programming language, that first appeared in 2011. According to the article, Snap! was inspired by Scratch.

• Annex 9: a website printout of a discussion forum from https://scratch.mit.edu, where the feature ‘make a block’ is discussed in the context of the programming language Scratch. The posts are dated in 2013 and 2014.

• Annex 10: a printout from the same website, where a screenshot entitled ‘make a block-fly’ is displayed, undated.

• Annex 11: a printout from https://sites.google.com/site/scratchadventures which includes ‘Scratch Lessons’, one of them being ‘Make a Block’ lesson, undated.

• Annex 12: a printout from www.cadoasis.com containing an article entitled ‘Blocks: Create / Make Block in DraftSight’, dated on 08/10/2014. According to the article ‘makeblock’ is a command in the DraftSight programming language.

• Annexes 13 and 14: printouts from the applicant’s website displaying the applicant’s products.

• Annex 15: a screenshot from YouTube video entitled ‘Make a Block – Scratch 2.0’, published on 08/09/2013.

The EUTM proprietor explains the history of the company, its success and international presence. It emphasizes that Makeblock products are used worldwide at schools to teach science, technology and engineering. It submits a list of awards received by the EUTM proprietor for Makeblock products. According to the EUTM proprietor, the applicant’s arguments are a compendium of disconnected arguments, deliberately presented in a deconstructed and confused manner with the aim of generating a negative view of the challenged EUTM. The EUTM proprietor argues that the mark should not be artificially dissected and that the fact that a sign is made up of components which may allude to certain features of the goods and services it identifies is not sufficient to invalidate the mark. The contested mark as a whole is merely suggestive and the combination of its elements is not the manner in which any of the contested goods are generally designated. The mark as a whole also does not describe any characteristics of the goods and services in question. Furthermore, the EUTM proprietor includes a list of EUTM registrations that include the word ‘block’. Finally, the EUTM proprietor also rebuts the applicant’s arguments regarding article 7(1)(e) and (g) EUTMR. The EUTM proprietor submits a selection of articles from press (in Spanish and English) and online, which refer to prizes awarded to it for Makeblock products and also refers to the EUTM proprietor company and its products in general.

The applicant argues that the documents submitted by the EUTM proprietor are in Spanish, are illegible or talk about the applicant as a company and not the trade mark or about different marks and, therefore, should not be taken into account. It reiterates its previous arguments and puts forward that they are corroborated by the documents filed by the EUTM proprietor itself. It quotes from one of the documents in which the EUTM proprietor is described as ‘maker of Lego-compatible electronic blocs’. It concludes that ‘make block’ is the regular way for describing the method through which the designated products are made or gathered. The applicant puts forward that ‘make a bloc’ is what consumers do with the EUTM proprietor’s products. It follows grammatical rules and is the normal mode for telling ‘you have to make/build a block’. It contends that the EUTM proprietor not just sells girders of metal, software and exhibitions but their girders have a concrete shape so they can be joined to make blocks with different forms, their software and electronic devices are joined together to build the necessary platform for their robots and their exhibitions are related with teaching robotics. It argues in detail that the missing article ‘a’ does not make a difference in terms of consumer perception and submits Google search results for the expressions ‘make block’, ‘makeblock’ and ‘make a block’ to show that the results are the same. It elaborates on its previous arguments regarding Article 7(1)(e) EUTMR and insists that the mark is devoid of any artistic value, that it is made up of a necessary sentence and that this will determine the commercial value of the product. The applicant also maintains that the mark will mislead consumers if it is used for goods which do not concern blocks.

In support of its further observations, the applicant submitted the following documents:

• Annex 16: printout from www.dummies.com including an article entitled ‘How to make blocks of ore and minerals in Minecraft’ and from www.solidworks.com which includes instructions on what seems to be a sketching program, the specific instruction selected is ‘making blocks’ which is a function of the program, and the introductory page ‘Creating and Using Sketch Blocks in Solidworks’, which includes a sentence ‘to make a block from scratch, you need…’. There is also a command named ‘Make Block’.

• Annex 17: a text from the book ‘Minecraft Recipes for Dummies’, including the instruction on how to make blocks of ore and minerals in Minecraft, where different types of minerals that can be found in the world of Minecraft are described, their purpose in the game is explained and how many stones are needed to build a block with special powers. For example, an iron block can be crafted from 9 iron ingots, which are smelted from iron ore. Iron blocks are critical ingredients in iron golems.

• Annex 18: website printouts concerning the sales achievements of the game Minecraft.

• Annex 19: an article dated 15/08/2016 entitled ‘Creating and Using Sketch blocks in Solidworks’ which is essentially a copy of the solidworks website from Annex 16.

• Annex 20: an article entitled ‘How to Make a Block’, concerning instructions of use of MCReator.

• Annex 21: website printouts related to instructions on how to make a block in Scratch.

The EUTM proprietor reiterates its previous arguments, maintains that the contested mark is inherently distinctive, non-descriptive, non-deceptive and Article 7(1)(e) EUTMR does not apply to it because the mark does not consist of a shape. It submits texts regarding robotics products for children to illustrate that the expression ‘make a block’ or ‘make block’ is not used in this context. The mark does not describe any characteristic of the contested goods or services. Children are not building blocks but robots. It gives examples of the products that it sells and points out that the words ‘make block’ or even ‘block’ are not used to describe the products. As regards Article 7(1)(g) EUTMR, the EUTM proprietor maintains that non-deceptive use is possible. The EUTM proprietor also submits partial translations of the previously filed documents that were in Spanish.

In its final observations, the applicant reiterates its previous arguments, emphasizes that the omission of an article is irrelevant and that in principle, combination of descriptive elements remains descriptive as a whole. It points out that the EUTM proprietor’s goods are described as kits and that they contain assembly parts to be put together. According to the applicant, the mark informs consumers that the products are made of pieces to be combined to make a block. It repeats its arguments regarding Article 7(1)(e) and (g) EUTMR.

Moreover, both parties refer, throughout their various rounds of observations, to their previous relationship (the applicant was the EUTM proprietor’s distributor in Spain) and their current disputes and submit the respective distribution agreements, documents regarding Spanish lawsuit and electronic communications between the parties. These arguments and documents will not be described here as they have no relevance for the assessment of the grounds invoked by the present invalidity application.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the contested mark was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Descriptiveness – Article 7(1)(c) EUTMR

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.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested mark is registered (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C‑344/07 P, Focus, EU:C:2008:222, § 21). The fact that a word might have different meanings in different contexts does not preclude the application of Article 7(1)(c) EUTMR, if the word is descriptive of the claimed goods and services in one of its possible meanings 15/11/2012, T‑278/09, GG, EU:T:2012:601, § 37).

The existence of the abovementioned relationship must be assessed, firstly, in relation to the goods covered by the contested mark and, secondly, in relation to the perception of the relevant public (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 30).

In the present case, the contested goods and services are metal building materials in Class 6, software and electronic devices in Class 9 and educational, entertainment and publication services in Class 41. The relevant public is public at large as well as professional public, in particular for the building materials in Class 6 and some of the devices in Class 9.

The contested mark is composed of English words. The evidence and arguments submitted by the applicant refer to the meaning of the sign in English. The Cancellation Division will, therefore, focus the assessment on the perception of the English-speaking public of the EU, that is, the public in the Member States in which English is an official language. The applicant did not argue or demonstrate that the public of the Member States where English is not an official language would perceive any meaning in the contested mark.

The verbal element of the mark consists of the word ‘MAKEBLOCK’. The Cancellation Division concurs with the applicant that the consumers will have no difficulties recognizing the English words ‘MAKE’ and ‘BLOCK’ in the mark. According to case-law, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the present case the two parts of the mark ‘MAKE’ and ‘BLOCK’ not only resemble known words but they are both known words and the mark does not contain any other letters that would obscure the fact that it consists of these two words put together. The figurative element will also be easily read as the letter ‘O’ due to its shape which is that of the letter ‘O’ and due to the fact that ‘O’ is the logical letter to be placed between the letters ‘L’ and ‘C’ to form a meaningful word.

According to the online Oxford English Dictionary (http://www.lexico.com/), the above terms have the following meanings:

make ...to form or create something

block …a solid piece of hard material

As said above, for the purpose of applying Article 7(1)(c) EUTMR, it is necessary only to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods in respect of which registration is sought (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) EUTMR are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. A sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (10/03/2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, § 50).

As repeatedly mentioned above, the crucial test is that of the perception of the relevant public. The question to be answered is, therefore, whether or not it is reasonable to believe that the word ‘Makeblock’ will actually be recognised by the relevant public as a description of one of the characteristics of the goods on which it is attached or services provided under it.

The applicant’s arguments revolve around the mark being equivalent to the expression ‘make a block’. The Cancellation Division agrees that the mark could be perceived in this meaning, and that the omission of the article ‘a’ is not an obstacle for consumers to perceive such concept in the mark.

On the other hand, the applicant’s arguments cease to hold water as regards the descriptiveness of the phrase ‘make a block’ in relation to the contested goods and services. The applicant puts forward that ‘make a block’ is what consumers do with the EUTM proprietor’s products. It follows grammatical rules and is the normal mode for telling ‘you have to make/build a block’. This reasoning could apply only to the goods in Class 6 and some of the goods in Class 9 (e.g. couplers, sensors, circuit boards etc.). However, none of these goods are referred to as blocks and it is not their purpose to make blocks. It is not a usual or foreseeable purpose of any of the contested goods to build blocks and consumers will not expect their purpose to be ‘making blocks’. It is true that most of these goods are designed to be used in building something, but they are not meant primarily to build blocks but to build actual objects such as machines, robots, computers, buildings, vehicles etc. Moreover, the mark does not even consist of words that could suggest that the purpose of the goods is to make blocks (e.g. blockmaker) but could be, at most, perceived as an invitation to make a block. However, an instruction to do something is not equivalent to the description of the action, which is furthermore, in the present case, not even any specific characteristic of the goods, as explained above.

It is reminded that Article 7(1)(c) EUTMR does not apply to those terms which are only suggestive or allusive as regards certain characteristics of the goods. Sometimes this is also referred to as vague or indirect references to the goods (31/01/2001, T-135/99, ‘Cine Action’, ECLI:EU:T:2001:30, § 29).

The mark does not directly describe any characteristic or quality of the goods but merely may allude the consumers to imagine things, which will vary depending on different consumers’ ideas. The word ‘make’ may lead the consumers to imagine that the goods are interactive, that things can be made with them, that they are on the creative side. The word ‘block’ can lead consumers to assume that the goods involve blocks. However, the combination of these two words does not lead to any objective and sufficiently specific meaning that could describe any real characteristic of the goods. In other words, there is no sufficiently direct and specific connection between the mark and the contested goods.

As regards the contested goods in Class 6, the applicant argues that the contested mark is descriptive because these goods are made of pieces that form a block and that the products sold by the EUTM proprietor under the mark have a concrete shape so they can be joined to make blocks with different forms. As regards the fact that the products are made of pieces that from a block, this is true about essentially any solid object and it is not any relevant characteristic of these goods. Consumers would not expect to find information that the product forms a block on these goods as such information is not normally given, it is rather an obvious fact and it is of no interest to the consumers. Moreover, there is a rather long and winding interpretative road from the word ‘makeblock’ to the conclusion that this means that the product on which this is printed was made of pieces to form a block. The fact that EUTM proprietor’s goods are products that can be joined together to form blocks with different forms also does not render the mark descriptive in relation to these building materials. As explained above, whilst it is a common characteristic of these goods to be used in further construction, their purpose is not to ‘make blocks’ but to make various objects such as, as mentioned above, machines, robots, buildings, vehicles, toys, etc. ‘Makeblock’ thus will not be perceived as an indication of the purpose of these goods since it is not their purpose and consumers would not expect it to be. Finally, to interpret the word ‘makeblock’ as an information that these goods contain blocks from which other objects can be made requires a mental leap, and consumers will not expect that this information is given by the word ‘makeblock’ because this would be an extremely unnatural, bizarre and imprecise manner of expressing it.

As regards the goods in Class 9, the applicant argues that they are the result of joining pieces in a block and the software products are made of blocks. Moreover, it claims that the EUTM proprietor’s software is joined together to build the necessary platform for their robots. Similarly as above, information that something was made of blocks is not a characteristic of these goods that consumers would expect to find described on the products. While it is true that method of production can be relevant information for consumers in some cases, in particular in foodstuff production, the fact whether or not certain products were made from blocks is not one of those cases. Consumers would not expect this information to be displayed on the goods as it is not a relevant characteristics of the goods and in any event, they would not assume that such information would be indicated in the form of the word ‘makeblock’, which can hardly be translated as ‘made from blocks’. As regards the second argument of the applicant, namely that the EUTM proprietor’s software and the electronic devices are joined together to build the necessary platform for their robots, it is not clear what connection this fact has to the word ‘makeblock’.

Finally, the applicant contends that the services in Class 41 will be used to develop ‘said activity’ (by which the applicant perhaps means making of blocks) and that they are related to teaching robotics. It also claims that, as regards the services, the mark informs that material is given in blocks of information enclosed in a file and is directed to teach how to program (using blocks). The Cancellation Division will interpret these arguments as that ‘to make blocks’ could be the subject matter of the services in Class 41, an argument that could also apply to computer programs and downloadable publications in Class 9.

Admittedly (and as shown by the applicant in Annexes 4, 5 and those regarding software and painting programs) instructive texts may concern the activity of block making. On the other hand, it is also shown by these documents that in such cases the word ‘makeblock’ would not be used to describe the subject matter of these texts but instead, the more comprehensible description would be used, such as ‘how to make blocks’, normally also including a more specific information as to the nature of the blocks. Making of blocks is such a specific activity that consumers would not expect there to be some type of descriptive shortcut for the entire field of block making such as ‘makeblock’, and, at the same time, they would also not expect the grammatically incorrect expression ‘makeblock’ to be the description of the subject matter of the particular publication or seminar. The applicant also provided several documents which show that ‘make block’ or ‘makeblock’ can be a function or command in some programming languages or drawing programs (the function, seemingly, allows users to combine several commands or drawings into a group which then can be used at other places in the same program where the same sequence of commands or drawings is needed). However, since there is no category of programs that would be characterized by this function and it was also not demonstrated that it could be a relevant characteristic of a program or programming language, from the perspective of the relevant public, that it includes such a function, it cannot be concluded that the word ‘makeblock’ is descriptive of any characteristic of such goods. Furthermore, it must be noted that the contested mark is not a word mark but includes a figurative element in the form of the letter ‘O’ stylized as a gear wheel. A gear wheel has no relationship to software or making of blocks and its presence in the mark further contributes to its inherent non-descriptive capacity.

Consequently, the contested mark will be perceived as a trade mark (albeit perhaps an allusive trade mark) rather than as an indication of the subject matter of the contested services and software or downloadable publications.

The documents submitted by the applicant do not support its arguments. They show that indeed there is a rather large number of toys or children’s activities involving blocks, and that the EUTM proprietor’s products include goods that are to be assembled together from different parts, but there is no indication that the word combination ‘make block’, ‘make a block’ or even ‘blockmaking’ or ‘making of blocks’ etc. would be used in these contexts. It is true that the mark does not have to be actually in use to be considered descriptive. However, there must be a reasonable likelihood that it could be used in a descriptive manner, in order for it to fall short of standards of Article 7(1)(c) EUTMR. In the present case, the applicant did not demonstrate either of the two.

The fact that blocks of stones and other materials can be built in computer games such as Minecraft lacks any relevance for the present case. The fact that an expression is used in some contexts of life does not automatically render that expression descriptive. In the present case, it is not clear to the Cancellation Division what is the connection between creating of blocks in computer games and the contested trade mark. Similarly, the fact that the expression ‘make a block’ may mean an instruction to drive around the block, is irrelevant for the present case as there is clearly no relationship between this meaning and the contested goods and services.

The expression in question is imprecise in relation to the contested goods and services and remains in the suggestive area. The connection between the contested mark and the goods and services concerned is sufficiently vague and ambiguous. The meaning which could be attributed to the combination of words ‘make’ and ‘block’ does not involve any specific feature of the goods or services concerned. Furthermore, as already mentioned above, the contested mark includes a figurative element in the form of the letter ‘O’ stylized as a gear wheel. A gear wheel’s relationship to the contested goods and services is non-specific or altogether non-existent. The mark must be assessed as a whole and, in addition to the fact that the word element is not descriptive, the figurative element shifts the mark even further away from a descriptive area. The consumers, both professionals and general public, may, at most, perceive in this word, in relation to the contested goods and services, a reference to blocks, but the mark as a whole will not be perceived as an actual description of the goods or services or any of their characteristics.

Considering all the above, it is concluded that at the relevant date, there was not, inherently, any sufficiently direct relationship between the contested mark and the goods and services in question. Contrary to the applicant’s arguments, the contested mark does not obviously and directly refer to the purpose or any other characteristics of the contested goods and services. The mark does not designate an easily recognizable and specific property of the contested goods and services.

For the sake of completeness, it is noted that the case law referred to by the applicant refers to trade marks (e.g. BioID, Eco Pro, Best Buy, Companyline, Trustedlink, Cine Comedy, ecoDoor, HIPERDRIVE, Carbon Green, Hundesport, 1clickdonation, Christmas Décor etc.) that are different from the contested one and no analogies can be drawn between them and the contested mark in the present case. While the general principles of the case law are observed, as they were in the assessment above, when applying such principles to the specific case of the contested mark, the conclusion was reached that the mark is not descriptive.

In the light of all the above, the Cancellation Division concludes that the mark does not (and did not, at the time of its filing) fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR. The application must be rejected insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(c) EUTMR.

Non-distinctiveness – Article 7(1)(b) EUTMR

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being 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 them 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 (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

The applicant’s arguments regarding lack of distinctiveness of the EUTM are the same as those mentioned above and they are based on the assumption that the contested sign is descriptive. However, as has been seen above, descriptiveness of the contested sign for the goods and services mentioned above cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness as regards those goods and services.

The applicant also argues that the expression ‘make a block’ is known to English-speakers and that it is a common one, and, therefore, the mark lacks distinctiveness. However, the mere fact that an existing expression may be recognized in a mark does not lead, in itself, to the mark being devoid of distinctive character. In the present case, it was explained above that there is no sufficiently direct and specific link between the mark and the contested goods and services and the Cancellation Division sees no other reason why the contested mark could not be able to fulfil its essential function and identify the commercial origin of the goods and services for which it is registered.

Consequently, the applicant failed to prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the registered goods and services and the application must be rejected also insofar as it was based on this ground.

Article 7(1)(e) EUTMR

The applicant quotes from the Regulation currently in force (Regulation (EU) No 2017/1001), in particular Article 7(1)(e) EUTMR, and focuses on 7(1)(e)(iii) in arguing, as far as the Cancellation Division understands, that the mark consists of ‘another characteristic’ which gives substantial value to the contested goods and services. It quotes from case-law and puts forward that the concept of ‘value’ can also be interpreted in terms of ‘attractiveness’, that is, the likelihood that the goods or services will be purchased primarily because of their particular shape of another particular characteristic.

Without discussing the possible interpretations of Article 7(1)(e) of the EUTMR currently in effect, it must be noted that since a declaration of invalidity of a trade mark results in the mark deemed not to have had, as from the outset, any effects, its validity must be assessed vis-à-vis legal provisions and requirements that were effective at the time of its filing. In order to declare a trade mark invalid, it must be demonstrated that it fell short of the standards of Article 7 EUTMR already at the time of its filing. Therefore, the situation must be assessed in relation to the relevant point in time, that is, the date of filing of the contested mark (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41).

The contested mark was filed on 04/12/2015. The applicable Regulation is, therefore, the one that was effective at that time, namely Council Regulation No 207/2009. According to Article 7(1)(e) of Regulation No 207/2009, the following cannot be registered:

signs which consist exclusively of:

(i)	the shape which results from the nature of the goods themselves;

(ii)	the shape of goods which is necessary to obtain a technical result;

(iii)

the shape which gives substantial value to the goods.

It is evident that at the time of its filing, the contested mark could only have been refused registration (as far as this provision is concerned) if it consisted of a shape. If it consisted of ‘another characteristic’, resulting from the nature of the goods, necessary to obtain a technical result or giving substantial value to the goods, this was not a reason for rejecting an EUTM application. Therefore, the applicant’s arguments regarding Article 7(1)(e) EUTMR are irrelevant, as they concern scenarios in which the contested mark consists of ‘another characteristic’ and this was not a condition for the registrability of a trade mark at the time when the contested mark was filed (and registered).

Since the contested mark clearly does not consist exclusively of a shape, it is evident that it does not fall short of the standard of Article 7(1)(e) of the EUTMR which was in effect at the time of filing of the contested mark and which is, therefore, applicable to the present case.

Deceptiveness – Article 7(1)(g) EUTMR

Pursuant to Article 7(1)(g) EUTMR, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services shall not be registered.

According to case-law, this ground for invalidity presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (04/03/1999, C‑87/97, Cambozola, EU:C:1999:115, § 41). Thus, a mere theoretical possibility that the public may be mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR (decision of 17/04/2007, R 1102/2005-4, “SMARTSAUNA”, § 32).

In addition, Article 7(1)(g) EUTMR “implies a sufficiently specific designation of potential characteristic of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics, which they do not in fact possess, will he be deceived by the trade mark.” (24/09/2008, T‑248/05, I.T.@Manpower, EU:T:2008:396, § 65).

When assessing whether a given trade mark is deceptive or not, account should be taken of market reality, meaning the way the goods are normally distributed and purchased, as well as of consumption habits and the perception of the relevant public. The relevant public is normally composed of reasonably well-informed, observant and circumspect persons. The average consumer is usually reasonably attentive, and should not be regarded as easily vulnerable to deception.

The applicant argues that consumers, on account of the presence of the word ‘block’ in the trade mark, will expect the contested goods and services to involve blocks and will be misled if this is not the case.

As explained above, there is no clear, objective and sufficiently specific message conveyed by the contested mark as a whole that would have any connection with the goods and services for which the mark is registered. Therefore, since consumers do not have any specific expectations upon encountering the mark, they cannot be deceived.

Even if it was considered that the presence of the term ‘block’ in the mark will cause the consumers to expect the contested goods and services be somehow connected to ‘blocks’, this would not lead to the conclusion that the mark can mislead the public. When broad categories of goods are registered and use of the mark could be deceptive for only some of the goods within the categories, whilst not for other goods within the same categories, the mark as such is not considered to be deceptive. It is in general assumed that the mark will be used in a non-deceptive manner. In other words, Article 7(1)(g) EUTMR does not apply if the specification has broad categories that include goods or services for which use of the trade mark would be non-deceptive. The word ‘block’ is a rather vague reference, and a relationship between the contested goods and services and ‘block’ is no further defined, so that if an expectation is created, it would be a very loose one. The contested goods and services are either defined as such broad categories that they could contain goods or services related to blocks and, thus non-deceptive use is possible, or they are so far away removed from any notion of blocks (e.g. girders, circuit boards or remote control apparatus to name a few) that there is no potential of deception of consumers, who will clearly understand that the given product has no connection to any block and they will perceive the mark as purely fanciful sign with no relation to any of the characteristics of the goods or services concerned. In either of the cases, Article 7(1)(g) EUTMR does not apply.

Considering the above, the application must be rejected also insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. 

 

 

The Cancellation Division

 

Robert MULAC

Michaela SIMANDLOVA

Oana-Alina STURZA

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.