Refusal of application for a European Union trade mark

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

Alicante, 09/11/2016

CASALONGA ALICANTE, S.L.

Avenida Maisonnave, 41-6C

E-03003 Alicante

ESPAÑA

Application No:	015287915
Your reference:	ALM16-1224EM
Trade mark:	SUPERMAXX
Mark type:	Word mark
Applicant:	Cheng Shin Rubber Ind. Co., Ltd. 215, Meei-Kong Rd., Huang-Ts'o Village Ta-Suen, Chang-Hwa Hsien TAIWÁN

The Office raised an objection on 19/05/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 19/09/2016, which may be summarised as follows:

1. The mark SUPERMAXX possess at least the minimum degree of distinctive character required by Article 7(1)(b. The term SUP ERMAXX is an invented word and does not have any meaning in itself. Whereas the first term SUPER is correctly spelled, the second component MAXX is not properly spelled and such an uncommon writing confers a particular appearance to this part of the mark and to the sign as a whole.

2. Further, the combination of both terms (SUPER +MAXX) as SUPERMAXX constitutes a neologism which has never been used or registered before in connection with the goods applied for. The sign is too vague and indeterminate to have a direct descriptive character.

3. The eligibility for registration as a Community trademark of allusive or suggestive signs has been confirmed by the General Court and the EUIPO in many prior decisions.

4. The EUIPO has already accepted for registration many other trademarks composed of a combination of two elements including SUPER as well as MAX (not even spelled as MAXX).

5. Therefore, the relevant public is not only the average EU consumer but also a professional public.

6. the Applicant submitted the evidence of acquired distinctiveness under the provisions of Article 7(3) which may be summarised as follows:

• 13 print outs of product catalogues. As it can be seen, the SUPERMAXX mark is used in combination with the applicant’s house mark MAXXIS.

• 4 Product leaflets, the leaflets show the use of the SUPERMAXX as a line of the MAXXIS (house mark)products

• 7 examples of Magazine advertising.
  The applicant has invested substantial funds in advertising its products in the European Union.
  
  

• 1 Newsletter advertising.

• 2 sample Invoices and 1 sample purchase order from Maxxis UK

• Statistic table showing sold products bearing “SUPERMAXX” mark undated and in GBP currency

The applicants submits that with the evidence it is demonstrated that the mark SUPERMAXX is used in combination with the house mark MAXXIS to designate a particular line of Tires for vehicle wheels

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.

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 (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). In the present case the Office agrees with the applican on the fact that the mark is too vague to be descriptive and there was no objection raised on article 7(1) (c) for this reason. However the Office is still of the opinion that there is nothing about the expression ‘SUPERMAXX’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

In addition, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

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 (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Acquired distinctiveness.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

All the evidence submitted has been issued or produced by the Applicant, and consists of a copies of catalogues, leaflets advertising and promotional material. There is no information as regards the way it is perceived, nor objective data (for instance, independent declarations) supporting the statement that the mark is highly recognized by persons active in the relevant business. The content of the documentation submitted shows use of the mark but does not clearly demonstrate that the earlier marks has acquired distinctiveness.

Regard must also be had to the quality of the evidence. Evidence given or certified by third parties will be more reliable than information generated in-house by the applicant.

As a result, the evidence does not show that the trade marks are known by a significant part of the relevant public.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 287 915 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.

Agueda MAS PASTOR