Refusal of application for a European Union trade mark

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

Alicante, 13/09/2016

PRINZ & PARTNER mbB Patent- und Rechtsanwälte

Rundfunkplatz 2

D-80335 München

ALEMANIA

Application No:	015322704
Your reference:	K2851EU
Trade mark:	BIOHARDCARBON
Mark type:	Word mark
Applicant:	Kuraray Co., Ltd. 1621 Sakazu, Kurashiki-City Okayama Prefecture JAPÓN

The Office raised an objection on 29/04/2016 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 his observations on 29/06/2016, which may be summarised as follows:

1. The sign, taken as a whole, is fanciful and inventive and does not convey a clear descriptive message about the goods in question. The applicant submitted Google search results (Annex I) in support of this argument; these search results relate to ‘HARD CARBON’, not ‘BIOHARDCARBON’.

2. The word ‘HARDCARBON’ already exists, and the applicant agrees with the examiner’s finding that it means ‘a new form of carbon that rivals diamonds in its hardness’; however, ‘biohardcarbon’ is very unusual and fanciful, in the applicant’s view.

3. Hard carbon is anything but a biological material, and, therefore, the word ‘biohardcarbon’ is an unexpected combination of words with contrasting meanings, in which carbon stands in opposition to ‘bio’; other words, such as ‘future’, ‘green’ or ‘intelligent’, would also contrast with the word ‘carbon’ in such a combination.

4. The applicant lists several conceptually similar cases in which the Office accepted the signs ‘FutureCarbon’ (EUTM No 2 668 184) in Class 1 for carbon, ‘CarbonGreen’ (EUTM No 9 332 271) in Class 1 for carbon and ‘INTELLIGENT CARBON’ (EUTM No 11 776 481) in Class 1 for carbon. Based on these cases, the applicant concludes that because these unusual combinations of the word ‘CARBON’ with a contrasting word, such as ‘future’, ‘green’ or ‘intelligent’, have been registered, ‘biohardcarbon’ should also be registered.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question’ (see judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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’ (see judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31).

The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office now replies to the applicant’s comments.

1. The applicant claims that the sign, taken as a whole, is fanciful and inventive and does not convey a clear descriptive message about the goods in question. The applicant submitted Google search results in support of this argument; these search results relate to ‘HARD CARBON’, not ‘BIOHARDCARBON.’

There is nothing new or unusual about the sign ‘BIOHARDCARBON’, which is merely no more than the sum of its parts conveying obvious and direct information regarding the kind and intended purpose of the goods in question. As already stated in the objection letter dated 29/04/2016, the mark conveys a clear descriptive message about the goods for which registration is sought, as it refers to biological hard carbon, hard carbon that has biological components or qualities, or hard carbon that is environmentally sustainable.

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 (see judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 32, and judgment of 30/11/2004, T‑173/03, ‘NURSERYROOM’, paragraph 21).

2. The word ‘HARDCARBON’ already exists, and the applicant agrees with the examiner’s finding that it means ‘a new form of carbon that rivals diamonds in its hardness’; however, ‘biohardcarbon’ is very unusual and fanciful, in the applicant’s view.

With regard to the argument that the mark for which registration is sought is unusual and fanciful, the Office reiterates that the sign ‘BIOHARDCARBON’ is merely a combination of three basic, easily comprehensible words, which will be easily understood by the relevant public, conveying obvious and direct information regarding the kind and intended purpose of the goods and services in question.

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 (judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 32).

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39).

The applicant failed to submit any evidence to prove that the trade mark for which registration is sought possesses inherent distinctiveness for the relevant public, as it claimed in its observations.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

3. Hard carbon is anything but a biological material, and, therefore, the word ‘biohardcarbon’ is an unexpected combination of words with contrasting meanings, in which carbon stands in opposition to ‘bio’; other words, such as ‘future’, ‘green’ or ‘intelligent’, would also contrast with the word ‘carbon’ in such a combination.

The Office disagrees with the applicant’s argument that the sign ‘BIOHARDCARBON’ is allusive and does not have a descriptive meaning in relation to the goods in question. On the contrary, the sign ‘BIOHARDCARBON’ is made up of an entirely understandable combination of three basic words, which are simply conjoined to create a meaningful expression that, in relation to the goods in question, imparts an immediate and obvious message.

Contrary to the applicant’s argument, the word ‘bio’, like the words ‘green’, ‘intelligent’ and ‘future’, has a direct and specific relationship with the goods in question, namely carbon-containing goods, which, although composed of chemical elements often associated with detrimental effects on the environment, are developed from biological material material that is not detrimental to the environment’, i.e. the goods are designed to be non-harmful to the environment (see judgment of 11/04/2013, T‑294/10, ‘Carbon green’).

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 (judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 32.)

This clearly applies to the present case. The sign ‘BIOHARDCARBON’ is a straightforward combination of three conjoined descriptive words, which does not create an impression sufficiently different from that produced by the mere combination of the elements of which it is composed, and thus does not amount to more than the sum of its parts. The Office is of the opinion that the sign at issue conveys obvious and direct information regarding the kind and intended purpose of the goods in question. Therefore, the trade mark applied for is a basic word combination, the meaning of which is entirely obvious. As such, it is not memorable in any way.

Moreover, according to settled case-law, when a trade mark 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 trade mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

4. The applicant lists several conceptually similar cases in which the Office accepted the signs ‘FutureCarbon’ (EUTM No 2 668 184) in Class 1 for carbon, ‘CarbonGreen’ (EUTM No 9 332 271) in Class 1 for carbon and ‘INTELLIGENT CARBON’ (EUTM No 11 776 481) in Class 1 for carbon. Based on these cases, the applicant concludes that because these unusual combinations of the word ‘CARBON’ with a contrasting word, such as ‘future’, ‘green’ or ‘intelligent’, have been registered, ‘biohardcarbon’ should also be registered.

The Office agrees that these previously registered trade marks and the sign applied for may be related in the sense that they refer to innovative carbon goods with an environmentally friendly composition. However, these marks were accepted in 2003. The mere fact that the Office has at some point registered a trade mark, perhaps in error, does not entitle even the same applicant to stake a claim for subsequent registrations. Since 2003, the Office’s practice has altered considerably and new guidelines have been implemented. Furthermore, the Office strives to be consistent and always considers its previous registrations; however, each examination must be considered on its own merit and decisions must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence backing them. In addition, it is not necessary for the examination of the trade mark in question to examine other trade marks that have previously been examined by the Office. 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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

Moreover, with regard to what the applicant describes as the ‘unusual, somewhat paradoxical combination of “green”, “intelligent”, “bio-” and “(hard) carbon”’, the Office draws the applicant’s attention to the judgment of the General Court of Justice regarding the trade mark ‘CARBON GREEN’ (judgment of 11/04/2013, T‑294/10, ‘Carbon green’), one of the trade marks the applicant listed as being registered. Bearing in mind the innovation process and global concern for environmental sustainability, carbon materials are constantly undergoing advancement and it is not unusual for carbon goods to have a biological, green or ‘eco’, that is, environmentally friendly, composition, particularly carbon goods that have practical applications, such as those designated by ‘HARD CARBON’. For instance, with regard to the trade mark ‘CARBON GREEN’, the GC declared that, although the combination of the words ‘CARBON’ and ‘GREEN’ may appear paradoxical, it is precisely a description of the characteristics of the goods, which, although composed of a chemical element associated with detrimental effects on the environment, were developed from reclaimed and recycled materials. The alleged contradiction did not exist, as there was a direct and specific relationship between the sign ‘CARBON GREEN’ and the goods in question (judgment of 11/04/2013, T‑294/10, ‘Carbon green’, paragraph 27). It is quite reasonable to envisage that the sign CARBON GREEN may, in future, be associated in the mind of the relevant class of persons with similar goods (judgment of 11/04/2013, T‑294/10, ‘Carbon green’, paragraph 45). Indeed, the direct and specific relationship with the goods concerned has been established (see paragraph 29), so that the relevant public may immediately perceive, without further thought, a description of the characteristics of those goods, which is, furthermore, supported by the fact that consumers and manufacturers are increasingly mindful of the ecological quality of goods and of environmentally friendly manufacturing processes (judgment of 24/04/2012, T‑328/11, ‘EcoPerfect’, paragraph 25, and judgment of 15/01/2013, T‑625/11, ‘ecoDoor’, paragraph 21), in particular in industry.¹

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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

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 15 322 704 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.

Gordana TRIPKOVIC