Refusal of application for a European Union trade mark

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

Alicante, 13/12/2016

Yorck-Percy Tietge

Tesdorpfstraße 19

D-20148 Hamburg

ALEMANIA

Application No:	015348915
Your reference:	1100.427
Trade mark:	Luftgekühlt
Mark type:	Word mark
Applicant:	Patrick Long Motorsport 3053 West Craig road unit E-162 North Las Vegas 89032 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 25/05/2016 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 26/09/2016, which may be summarised as follows:

1. The mark is a play on words

2. The Office did not substantiate the facts

3. The services applied for cannot be air cooled

4. The Office has accepted other marks which are positive or appealing

5. The USPTO has accepted the mark in question

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 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).

The mark is a play on words

The applicant holds that the mark is a play on words. The Office however does not find this argument convincing. The mark consists of a single word in German which means ‘air-cooled’. There is no play with words. The mark is clear as to its meaning and German speaking consumers will immediately understand its meaning. The mark is descriptive and non-distinctive for the goods applied for.

The Office believes that the mark has nothing that can be considered to be distinctive. Consumers in the German speaking parts of the relevant territory will not see the mark as a trade mark or as a business identifier, but rather as a word with a specific meaning for the goods in question.

The Office did not substantiate the facts

The applicant argues that the Office did not substantiate the facts. The Office finds this argument hard to fathom. The Office has backed its arguments with a dictionary reference. The applicant did not provide evidence on how will these mark be perceived in a different way than the one described by the Office, in the German speaking part of the relevant territory. Therefore the claims of the applicant have to be brushed aside.

The services applied for cannot be air cooled

The applicant argues that the services applied for cannot be air cooled. There is no such thing such as air-cooled educational services, the conducting of events, courses, competitions and seminars.

Although it is true that there is no such thing such an air-cooled educational service, however this can also be the subject matter of the service. Therefore such a mark for these services will be taken to mean, that the subject matter of the education services or the courses and events will be ‘air cooling’.

The Office believes that there is nothing distinctive about the mark. The mark is quite simply descriptive and non-distinctive. The mark cannot function as a trade mark, as a business identifier. It will be understood in a descriptive sense by the German speaking consumers in the EU.

The Office has accepted other marks which are positive or appealing

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).

Furthermore the Office does not consider the mark in question in this case comparable to the marks cited by the applicant. Each and every case has to be examined on its own merits. Furthermore the marks cited are considered to be rather old. Office practice changes over time, to reflect new market realities and case law emanating from the Courts and from the Boards of Appeal. Therefore what might have been registerable ten years ago, might not be regiusterable now.

The USPTO has accepted the mark in question

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

‘In addition … references to national registrations conferred by Member States which do not have German as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

The practice of the USPTO may differ from the practice of EUIPO. Thus the fact that a mark has been accepted by the USPTO does not restrict the EUIPO from raising an objection on Absolute Grounds. Furthermore the Office notes that the language of the USPTO is not German. The objection in this case only relates to the German speaking part of the public. Thus a reference to a National Office of a country where the language is not German, is rather irrelevant.

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 15 348 915 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.

Alistair BUGEJA