Refusal of application for a European Union trade mark

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

Alicante, 25/07/2016

Sara Hillary Margaret Gibson

Johnson Matthey Intellectual Property Department

P.O. Box 1 Belasis Avenue

Billingham, Cleveland TS23 1LB

REINO UNIDO

Application No:	015116809
Your reference:	15107/EM
Trade mark:	PERFORM
Mark type:	Word mark
Applicant:	JOHNSON MATTHEY PLC 5th Floor 25 Farringdon Street London REINO UNIDO

The Office raised an objection on 11/03/2016 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 11/05/2016, which may be summarised as follows:

1. The goods in Class 1 are not capable of carrying out an action. Therefore, the sign does not inform consumers of the characteristics of the goods.

2. In relation to the services in Classes 40 and 42, the public will not understand the sign with the meaning given by the Office, and the sign has no meaning in relation to those services.

3. Moreover, the sign is not laudatory.

4. The applicant agrees to remove the services in Class 40 from the specification if the examiner withdraws her objection to the application as a whole.

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.

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).

In the refusal letter, the meaning of the word ‘PERFORM’ was given as ‘to carry out or do (an action)’. The goods for which registration is sought in Class 1 are various chemical substances that can perform a function, for example those capable of carrying out a (chemical) action. Performance chemicals are, for example, chemicals that are known for their extremely high purity and outstanding quality. Chemical products, preparations and substances are able to perform chemical reactions; therefore, the word is purely descriptive for the goods for which registration is sought.

The meaning of the word also applies on the perception of the relevant specialised public. The specialised public is used to categorising the products and chemicals into different performance classes on the basis of their capacity to perform certain processes. In addition, considering the higher than average degree of attention of this public, the specialist public will understand the word with the meaning given above.

As regards the applicant’s argument that the specialist public will not perceive the meaning of the word ‘PERFORM’ in relation to the specialised services in Class 40, as explained above, the meaning of the word ‘PERFORM’ is defined in dictionaries. Taking into account this definition of the word, and the fact that the specialist public is used to the vocabulary of performance, etc., this argument is not well supported.

The specialisted public will also understand that the goods and services in question involve performing procedures, carrying out treatments and providing technical information.

As explained, the public is used to categorising the relevant goods into performance classes; therefore, the word ‘PERFORM’ reltates to the quality of the goods and services. Therefore, there is nothing about the sign that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods and services in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28).’

As regards the applicant’s auxiliary request to delete the services in Class 40 from the specification, the applicant’s request to limit the list of goods and services if the examiner withdraws the objection cannot be taken into account.

First, conditional limitations cannot be taken into account. Limitation requests have to be express and unconditional. Therefore, the auxiliary request cannot be taken into account.

Second, the limitation would not remove the grounds for the objection.

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 15 116 809 is hereby rejected.

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.

Claudia MARTINI