Refusal of application for a European Union trade mark

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

Alicante, 01/08/2016

MACLACHLAN & DONALDSON

2b Clonskeagh Square, Clonskeagh Road,

Dublin D14 V0N2

IRLANDA

Application No:	015071814
Your reference:	NM/PR/T28319.EU
Trade mark:	e-car
Mark type:	Figurative mark
Applicant:	ELECTRICITY SUPPLY BOARD Lower Fitzwilliam Street Dublin 2 IRLANDA

The Office raised an objection on 23/03/2016 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 18/05/2016, which may be summarised as follows:

1. A single dictionary entry is not a conclusive indication that a definition is known or recognised by the public.

2. The definition provided arises from the activities of the applicant

3. The mark is a cleverly designed logo and not a meaningless figurative device

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.

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 underlying 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 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.

(23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 31).

‘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’ (26/11/2003, T 222/02, Robotunits, EU:T:2003:315, § 34).To begin with and contrary to the applicant’s arguments, the definition provided does not arise from the activities of the applicant but from the Collins concise dictionary.

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.

(23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Finally, the Office agrees with the Applicant that the mark is not only a word combination but also a logo. However, as stated in our previous notification, the logo contributes to reinforce the descriptive message conveyed by the words.

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 15 071 814 is hereby rejected for the following goods and services:

Class 9 Batteries; electric batteries; battery chargers; electric battery chargers; electric battery charging apparatus; electric battery charging units; apparatus and units for use in charging and recharging batteries for electric vehicles and hybrid electric vehicles.

Class 12 Vehicles; electric vehicles; hybrid electric vehicles; electric cars and other electric and hybrid electric land vehicles; parts and fittings for all the aforementioned goods.

Class 35 Business management of an electric vehicle and hybrid electric vehicle charging infrastructure to enable consumers to recharge vehicles and to purchase electricity for such vehicles through a network of distribution centres, installations and outlets; consultancy and advisory services relating to the aforementioned services.

Class 37 vehicle battery replacement services; consultancy and advisory services relating to the aforesaid services; providing and operating an electric and hybrid electric vehicle charging infrastructure to enable consumers to recharge electric and hybrid electric vehicles through purchase of electricity for such vehicles through a network of distribution centres, installations and outlets.

Class 39 Distribution of energy for use in propelling vehicles; arranging and managing the distribution and supply of energy for use by electric and hybrid electric vehicles; consultancy and advisory services relating to the aforesaid services.

Class 40 Services for recharging vehicle batteries and for storing electricity in vehicle batteries.

The application is accepted for the remaining goods.

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.

Agueda MAS PASTOR