Refusal of application for a European Union trade mark

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

Alicante, 04/07/2017

MOSER GÖTZE & PARTNER PATENTANWÄLTE MBB

Paul-Klinger-Str. 9

D-45127 Essen

ALEMANIA

Application No:	015304207
Your reference:	116137EU
Trade mark:	FLEXTRUCK
Mark type:	Word mark
Applicant:	Dematic Corp. 507 Plymouth Avenue NE Grand Rapids, Michigan 49505 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/04/2016 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 06/05/2016 which may be summarised as follows:

1. The word ‘FLEX’ would normally be understood as flexible in the sense of bendable and not as adaptable as the examiner claims.

2. The case law cited is not relevant. German case law is irrelevant to EUIPO decisions and the General Court decision T-187/14 is related to a trade mark that is made up of the single word element ‘FLEX’ unlike the present case where there is the additional element ‘TRUCK’.

3. The LGL example is not relevant as it does not use the terms ‘FLEX’ or ‘TRUCK’ and the relevant Google search with the word ‘FLEXTRUCK’ will lead to results from the applicant’s trademark. In addition the vehicle is not an automatic guided vehicle.

4. Therefore ‘FLEXTRUCK’ is not totally devoid of any distinctive character and is capable of distinguishing the claimed goods.

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.

General remarks on 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 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).

Observations of the applicant

1. Flex would normally be understood as flexible in the sense of bendable and not as adaptable as the examiner claims.

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.)

In the present case, as the applicant points out, one of the meanings of flexible is bendable or pliable but another meaning, and the most obvious one that would spring to mind in connection with the word ‘TRUCK’ would be flexibility in the sense of adaptability. The consumer would immediately realise that the trucks in questions would be flexible or adaptable, adapting for example to the users’ needs. Therefore the relevant public would make a direct and specific association between the expression ‘FLEXTRUCK’ and the goods at issue.

2. The case law cited is not relevant. German case law is irrelevant to EUIPO decisions and the General Court decision T-187/14 is related to a trade mark that is made up of the single word element ‘FLEX’ unlike the present case where there is the additional element ‘TRUCK’.

The legislation and administrative practice of certain Member States can be taken into account not because of their normative value but as evidence of facts that make it possible to assess the perception of the relevant public in those Member States. In this context the German case cited is relevant as it shows the perception of the German consumer when faced with the word ‘FLEX’. They would interpret it as ‘flexible.’

With regard to the judgement of 07/10/2015, T-187/14 § 21, the relevant point is that ‘FLEX’ will be interpreted as ‘flexible’ or ‘the capacity to adjust’. The fact that this descriptive verbal element is in juxtaposition with another descriptive word ‘TRUCK’ does nothing to increase the distinctive character of the sign which is made up of two descriptive word elements placed together without a space, ‘FLEXTRUCK’

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of 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: that assumes 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 is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the present case the sum of the elements ‘FLEX’ and ‘TRUCK’ does not lead to anything more than the mere sum of its parts and therefore the combination is devoid of disintinctive character.

5. The LGL example is not relevant as it does not use the terms ‘FLEX’ or ‘TRUCK’ and the relevant Google search with the word ‘FLEXTRUCK’ will lead to results from the applicant’s trademark. In addition the vehicle is not an automatic guided vehicle.

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).

The LGL example is relevant in the sense that it shows that the word ‘flexible’ is used to describe a characteristic of a vehicle. As pointed out by the applicant, a Google search gives rise to other results, Ford Flex for example, a truck type vehicle, and the applicant’s trade mark where ‘FLEXTRUCK’ is referred to as a ‘solution that can grow in size and sophistication as your needs grow’.

3. Therefore ‘FLEXTRUCK’ is not totally devoid of any distinctive character and is capable of distinguishing the claimed goods.

The Office maintains that ‘FLEXTRUCK’ is devoid of distinctive character. It is a combination made up of two descriptive words. The consumer will immediately associate the meaning of the mark with the goods at issue. The applicant does not offer any solid argumentation to refute this.

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 15 304 207 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.

Lynn BURTCHAELL