Refusal of application for a European Union trade mark

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

Alicante, 26/08/2016

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	15 181 423
Your reference:	T306744/HJC
Trade mark:	advanced engineering
Mark type:	Figurative mark
Applicant:	Advanced Engineering Ltd Guardian House, Stroudley Road Basingstoke, Hampshire RG24 8NL REINO UNIDO

The Office raised an objection on 24/03/2016 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 08/04/2016, which may be summarised as follows:

1. The sign applied for is distinctive in relation to all the goods for which registration is sought and possesses at least the minimum degree of distinctive character required.

2. The trade mark must be examined as a whole, not just the words ‘ADVANCED ENGINEERING’.

3. The mark has a number of meanings, which makes the words ‘ADVANCED ENGINEERING’ vague, requiring mental interpretation by the consumer.

4. The words ‘advanced’ and ‘engineering’ have additional meanings to those provided by the Office. In addition, the dictionary used by the Office is an American English dictionary which is not relevant in the European Union and the Office should use a British English dictionary.

5. In the official letter, the Office focused its reasoning on individual dictionary definitions, picking definitions for each word that best supported its argument and fusing these definitions together, rather than considering the trade mark as a whole. Furthermore, focusing on dictionary definitions is not the correct test for an objection under Article 7(1)(c) EUTMR, which instead requires there to be a ‘sufficient, direct and specific relationship’ between the trade marks and the goods and services in question to enable the public concerned to immediately perceive, without further thought, a description of one of the goods and services in question or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25).

6. The overall impression conveyed by the trade mark ‘ADVANCED ENGINEERING’ (logo) is different from any of the individual meanings of the words of which it is composed. Indeed, the applicant does not claim a monopoly on the individual words, but rather claims a monopoly on the trade mark as a whole, namely on Advanced Engineering’s logo. Therefore, it cannot be said that the trade mark consists ‘exclusively’ of signs or indications which may serve to designate a characteristic of the goods in question, which is necessary for a refusal on the grounds of Article 7(1)(c) EUTMR.

7. The trade mark does not directly and specifically refer to the goods for which registration is sought, nor does it describe a characteristic of the goods, and, as can be observed, the goods for which registration is sought are wide-ranging.

8. With regard to the excellence of the applicant’s goods under the trade mark ‘ADVANCED ENGINEERING’, consumers are not directly and immediately informed about the qualities or specific characteristics of the goods for which registration is sought. The sign applied for leaves an open question for consumers to resolve and, at the very least, consumers will be forced to take additional mental steps to understand what is being communicated by the trade mark. For this reason, the trade mark is distinctive.

9. The trade mark is not plain and does not contain the kind of language an English speaker would normally use to describe the relevant goods in the marketplace. Accordingly, the relevant public would find it difficult to make a sufficiently direct and specific association between the trade mark and the goods for which registration is sought.

10. In terms of distinctiveness, in order to maintain the objection under Article 7(1)(b) EUTMR, a mark must be devoid of any distinctive character. Advanced Engineering’s logo is not wholly devoid of any distinctive character and has the required degree of distinctiveness.

11. While the trade mark contains everyday English words, it has numerous and vague meanings and is imprecise in explaining how the goods in question relate to the trade mark ‘ADVANCED ENGINEERING’ (logo). Furthermore, it is relatively unusual to begin a sentence with an adjective; consumers are, therefore, likely to recognise the trade mark as an indication of origin, rather than perceiving it as a descriptive expression.

12. The fact that a word is part of everyday English language does not prevent it from being used as a trade mark.

13. Furthermore, the word ‘advanced’ appears in lower case letters in yellow and underneath it the word ‘engineering’ appears in smaller lower case letters in white. The background is a blue rectangle with grey rounded edges. The colour and font combinations within the trade mark are themselves distinctive and therefore add to the overall distinctiveness of the trade mark. It is the trade mark as a whole that the applicant seeks registration for, and it is the trade mark that should be assessed for registration purposes.

14. The internet search results do not refer to the goods for which registration is sought, namely plastics, diesel engines, etc., and most of the results refer to services and, therefore, would not be relevant in the context of the goods for which registration is sought.

15. The applicant has an earlier registration, EUTM No 6 243 919 ‘ADVANCED ENGINEERING’ (logo), for goods in Classes 1, 3, 5, 8, 9 and 11, that has been accepted prima facie, and so the applicant fails to understand why the updated logo has not been accepted for registration. In addition, the applicant refers to EUTM No 14 053 615 ‘ADVANCED ENGINERRING’, which was registered for goods in Class 7.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the holder 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).

It follows that, for a sign to fall within the scope of the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 40).

For a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) EUTMR, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 37; 12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31; and 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 26).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of the characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. This presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word or neologism is more than the sum of its parts (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 100; and 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 41).

A mark’s descriptiveness must be assessed not only in relation to the goods or services concerned, but also in relation to the relevant public.

1. In the present case, the goods to which an objection has been raised and for which registration is sought are both specialised goods and goods for general consumption and are aimed at both average consumers and a professional public.

It should be emphasised that a higher degree of attention and awareness does not imply that a sign is subject to a lower degree to any absolute grounds of refusal. In fact, it can be quite the contrary; words that are not (fully) understood by the public at large can be grasped immediately by a professional public, in particular if the sign is composed of words that relate to the field in which the professional public is active (11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27 to 28).

Furthermore, it should be pointed out that the public by reference to which the absolute ground of refusal must be assessed consists of the English-speaking public, which obviously includes at least the public in the Member States in which English is the official language, namely Ireland, Malta and the United Kingdom.

Since the sign applied for consists of a combination of meaningful English words, it may have a meaning not only for native English speakers, but also for a public that has sufficient knowledge of English. In this respect, a basic understanding of English by the general public, in any event, in the Scandinavian countries, the Netherlands and Finland is a well-known fact. This also applies to Cyprus (09/12/2010, T‑307/09, Naturally active, EU:T:2010:509, § 26 and 27; and 22/05/2012, T‑60/11, Suisse Premium, EU:T:2012:252, § 50). The Court has also stated, for example, that a knowledge of English, admittedly to varying degrees, is relatively widespread in Portugal and that, although it cannot be claimed that the majority of the Portuguese public speaks English fluently, it may, however, reasonably be presumed that a significant part of that public has at the very least a basic knowledge of that language (16/01/2014, T‑528/11, Forever, EU:T:2014:10, § 68).

In the light of the foregoing, the English-speaking public concerned is a significant part of the relevant public throughout the entire European Union, including at least consumers in Ireland, Malta, the United Kingdom, Cyprus, Denmark, Finland, the Netherlands and Sweden.

As the applicant correctly pointed out, the trade mark must be examined as a whole. Therefore, for a mark composed of distinct elements, such as the mark in question, the distinctiveness of each element taken separately may be assessed in part, but the assessment must in any event depend on an appraisal of the composite whole (12/06/2007, T‑90/05, Twist & Pour, EU:T:2007:171, § 43).

The applicant’s sign contains the English words ‘advanced engineering’. The Office, based on dictionary definitions, has provided the following meanings of the words in the mark: ‘advanced’ will be understood as ‘being beyond others in progress or ideas’, ‘being beyond the elementary or introductory’ or ‘greatly developed beyond an initial stage’ and the word ‘engineering’ as ‘the work of designing and creating large structures (such as roads and bridges) or new products or systems by using scientific methods’, ‘the application of science and mathematics by which the properties of matter and the sources of energy in nature are made useful to people’ or ‘the design and manufacture of complex products’. Consequently, the relevant consumer will understand the words in the mark as a meaningful expression: new products or systems greatly developed by using scientific methods.

The applicant argues that the words ‘advanced’ and ‘engineering’ have additional meanings to those provided by the Office and that the Office should have used a British English dictionary instead of an American English dictionary, the latter not being relevant in the European Union.

As regards the argument that the Office should have used a British English dictionary instead of an American English dictionary, it should be pointed out that, in its decision of 18/03/2013, R 424/2012-2, INSTRUMENTARIUM DENTAL, § 17, the Second Board of Appeal came to the following conclusion:

The European public is often, even daily, exposed to American English through the media, as the Court of Justice and the Board of Appeal have established in their previous decisions (see e.g. judgment of 9 July 2008, T- 323/05, ‘The Coffee Store’, para. 40; decision of 20 December 2011, R 716/2011-2, ‘PAYWIZARD’, para. 24; and decision of 5 July 1999, R 179/1998-1, ‘ASCOT’, para. 17). Furthermore, with respect to the goods covered in the application, it can also be stated that, over recent decades, science and research have become even more international, and the Internet has also contributed to the fact that the professional audience have become familiar with scientific publications in their field written in American English and articles concerning these, and thus also the relevant terminology, irrespective of their country of residence or continent. The variants of the English language spoken in the United Kingdom and in Ireland and, on the other hand, in the United States and in Canada cannot be clearly distinguished from one another. Particularly in the English-speaking world and in sectors such as medical science, phrases travel around.

Additional meanings of the words ‘advanced’ and ‘engineering’ may exist. This is, however, not relevant for the present case. A trade mark application has to be refused pursuant to Article 7(1)(c) EUTMR if at least one of a sign’s possible meanings designates a characteristic of the goods or services concerned (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 97; and 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). In addition, the more additional meanings that exist, the more difficult it is to oppose the sign’s apparent descriptive character and establish that the sign is sufficiently distinctive to function as a trade mark on the market.

A word mark remains descriptive even if there are other, possibly more usual, designations of the features concerned or if there are synonyms for describing these features that may be used by third parties (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 57 and 101).

The relevant public will immediately perceive that the sign applied for consists merely of the conjunction of two basic English words, ‘advanced’ and ‘engineering’.

The sign is a word mark with some minor graphical elements. However, the words are easily discernible and there can be no doubt as to their meaning. It would be a mistake to think that the use of special fonts or colours could eliminate any absolute grounds objections.

The applicant claims that the trade mark is not plain and does not contain the kind of language an English speaker would normally use to describe the relevant goods in the marketplace. In addition, the applicant argues that it is relatively unusual to begin a sentence with an adjective and that the consumers are, therefore, likely to recognise the trade mark as an indication of origin, rather than perceiving it as a descriptive expression.

The Office cannot agree with the applicant’s abovementioned arguments for the following reasons.

Even if the Office were to accept the argument that is relatively unusual to begin a sentence with an adjective, it should be pointed out that, when an adjective is used with a noun, the usual order in English is adjective then noun. Moreover, the examples for the word ‘advanced’ in the Collins English Dictionary begin with the adjective: ‘advanced studies’, ‘advanced views’, etc. It follows that the combination of words ‘advanced engineering’ is grammatically correct and perfectly understandable without further thought being required.

Although modern marketing adopts various approaches to give importance to a word or somehow raise its prominence in a sentence or on packaging, none of this supports the manifestly unfounded assertion that the relevant public will embark on an intellectual journey to explore whether the combination of words ‘advanced engineering’ is commonly used or a neologism, since a trade mark consisting of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive, unless there is a perceptible difference between the word or neologism and the mere sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 43; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 104). In the present case, the sign is no more than the mere sum of its parts.

Accordingly, in relation to all of the goods for which registration is sought, the word combination ‘advanced engineering’ is immediately clear and will be understood by the relevant public without a moment’s hesitation as referring to new products or systems greatly developed by using scientific methods. Given that all the goods are the result of advanced engineering or include or have been developed using scientific methods, the contested sign simply conveys obvious and direct information regarding the kind and quality of the goods in question.

Contrary to the applicant’s arguments, the words ‘advanced engineering’ taken as a whole indeed constitute a clear and meaningful expression in relation to the goods for which registration is sought, and will be perceived immediately as such by the relevant public. Consequently, the Office cannot share the applicant’s view that the consumers will not be directly and immediately informed about the qualities or specific characteristics of the goods for which registration is sought; that the sign applied for leaves an open question for consumers to resolve; and that, at the very least, consumers will be forced into taking additional mental steps to confirm what is being communicated by the trade mark.

The Office cannot share the applicant’s view that Advanced Engineering’s logo is not wholly devoid of any distinctive character and has the required degree of distinctiveness.

With regard to the lack of distinctive character, it should be pointed out that in general, descriptive/non-distinctive word elements appearing in a basic/standard typeface or lettering, or in handwriting-style typefaces – with or without font effects (e.g. bold, italics) – are not registrable.

Where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or are likely to create a lasting impression of the mark, the mark is registrable.

The mere ‘addition’ of a single colour to a descriptive/non-distinctive word element, either to the letters themselves or as a background, will not be sufficient to give a mark distinctive character.

In general, the fact that the word elements are arranged vertically, upside-down or over one or more lines is not sufficient to endow a sign with the minimum degree of distinctive character that is necessary for registration.

Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the abovementioned shapes are used as a frame or border.

In the present case, the sign applied for consists of the combination of a basic geometric shape, a blue rectangle with grey rounded edges, and the word elements ‘advanced engineering’ written on two lines, with the word ‘advanced’ in yellow and the word ‘engineering’ in white, all in standard typefaces and without incorporating any additional element that could confer a sufficient degree of stylisation on the mark to endow it with the minimum degree of distinctive character required or to distract the attention of the consumer from the descriptive meaning of the word elements.

Therefore, the Office cannot share the applicant’s view that the colour and font combinations within the trade mark are themselves distinctive and therefore add to the overall distinctiveness of the trade mark applied for.

The applicant argues that the internet search results presented by the Office do not refer to the goods for which registration is sought, namely plastics, diesel engines, etc., and that most refer to services and, therefore, are not relevant in the context of the goods for which registration is sought.

With regard to the abovementioned argument, the Office submits that, pursuant to the wording of Article 7(1)(c) EUTMR, the actual use of the mark by competitors is not a requirement for the application of that provision. In any case, descriptive use by one undertaking already indicates that the mark ‘may be used’ to describe the kind, quality, intended purpose or other characteristics of the goods.

As regards the applicant’s argument that the Office has accepted prima facie its earlier mark EUTM No 6 243 919 ‘ADVANCED ENGINEERING’ (logo) for goods in Classes 1, 3, 5, 8, 9 and 11, as well EUTM No 14 053 615 ‘ADVANCED ENGINERRING’ for goods in Class 7, it should be noted that, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 77).

In addition, it should be pointed out that the applicant’s earlier mark was filed in 2007 and registered in 2008. Based on the continuous and dynamic changes in the market, the case law and the standing Office practice have been developing and, therefore, the applicant cannot rely on previous registrations for acceptance of the present mark.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and 7(2) EUTMR, the application for figurative European Union trade mark No 15 181 423 is hereby rejected for all the goods claimed.

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.

Roxana PISLARU