Refusal of application for a European Union trade mark

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

Alicante, 17/05/2017

HEPWORTH BROWNE LIMITED

15 St Paul's Street

Leeds LS1 2JG

REINO UNIDO

Application No:	015409816
Your reference:	RFB/MOD-T5543EM
Trade mark:
Mark type:	Figurative mark
Applicant:	ModTruss Inc 463 Cedar Street Fond du Lac Wisconsin 54935 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 01/06/2016 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. On 03/10/2016 the applicant submitted its observations and reserved its right to file further evidence of acquired distinctiveness through use. On 17/03/2017 and 31/03/2017 the applicant submitted further material in order to prove acquired distinctiveness, which consists of:

1. The turnover figures for the years 2015-2017. The applicant argues that the mark was first used in the EU in January 2015 and that it has been in continuous use since then in England, France, Italy, Germany, Belgium, Denmark and Sweden.

2. The amounts spent on promoting the mark for 2015-2017.

3. The applicant argues that the pattern applied to the surface of the goods is unique, distinctive and immediately recognisable to a customer.

4. A letter from Mr Fox, who states that for the past 39 years he has been the director of the Association of British Theatre Technicians’ annual trade exhibition of backstage equipment and services. Mr Fox confirms that he is very aware of new developments in theatre technology across all disciplines, including lighting, sound and stage engineering. His opinion is that “the product is unique and has a distinctive pattern created by the box shape with the clover and boltholes placed in a regular pattern”. This makes the Modtruss product distinct from any other product that he is aware of in the market.

5. A second letter is from Mark Surtees of Outback Rigging, Chair of the National Rigging Advisory Group, stating that “the sign of the Modtruss product in the form of a solid wall box beam with distinct cut-out sections and pre-drilled locating points is an unusual and innovative concept. It is this uniqueness of the design that makes the Modtruss girders instantly recognisable on site or at an event”.

6. A letter from Nic Howden of All Access Communications stating that “the clover and bolthole pattern brings a look and functionality which is quite unlike any other truss or girder which he has seen in the events world. The clover and bolthole pattern is an integral part of the structure, repeated every foot on all six sides, making the product instantly recognisable”.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

The applicant argues that the pattern applied to the surface of the goods is unique, distinctive and immediately recognisable to a customer. In this regard the Office notes that the octagonal apertures with surrounding holes pattern are not sufficient for the public to recognise in the sign an indication of origin for the goods applied for. The sign is not capable of distinguishing the applicant’s goods from the goods and services offered by its competitors. It is unable to perform its distinguishing function. The public targeted would only see in the sign a simple rectangle with hole pattern being purely decorative element. In its entirety, this geometric shape is thus not capable of identifying the goods in question.

Article 7(3) EUTMR determines that ‘paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it’.

First, the acquisition of distinctive character as a consequence of the use of a mark requires that at least a significant proportion of the relevant section of the public identifies products or services as originating from a particular undertaking because of the mark (06/03/2007, T-230/05, Golf USA, EU:T:2007:76, § 79).

That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which makes it capable of distinguishing the goods concerned from those of other undertakings (27/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 25, with reference to 18/06/2002, C-299/99, Remington, EU.C:2002:377, § 64; see also, 08/97/2011, R 1798/2010-G, La qualité est la meilleure des recettes, § 34).

When that is the case, the sign has gained a new significance and its connotation, no longer purely non-distinctive, justifies its registration as a trade mark (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 47).

However, the circumstances in which the requirement of distinctiveness acquired through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 51-52).

Second, geographically, according to case-law, a mark can be registered by virtue of Article 7(3) EUTMR only if evidence is provided that it has acquired through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such a character.

In the present case, the mark applied for will be perceived as non-distinctive throughout all Member States irrespective of any language skills since it is a figurative trade mark. Therefore, the applicant has to provide evidence of acquired distinctiveness related to the entire EU.

Third, for Article 7(3) EUTMR to apply, a trade mark must have become distinctive through use before the application was filed (12/12/2002, T-247/01, Ecopy, EU:T:2002:319, § 36; 11/06/2009, C-542/07 P, Pure Digital,EU:C:2009:362, § 42, 52). The application at issue was filed on 09/05/2016, for which the mark must have become distinctive through use before that date.

In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the products concerned as originating from a particular undertaking, and thus to distinguish those products from goods or services of other undertakings. In that regard, it is necessary to take into consideration, 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; statements from chambers of commerce and industry or other professional associations and opinion polls (21/04/2015, T-359/12, Brown and beige chequerboard pattern, EU:T:2015:215, § 89-90 and the case-law cited).

The burden of proof lies with the applicant who claims that the sign has acquired distinctiveness.

Taking into account that the acquired distinctiveness of the mark applied for must be shown in respect of the entire territory of the EU, it is noted that the applicant states that the mark has been used in seven Member States of the EU. The applicant indicates the turnover figures and the amounts spent on promoting the mark for the years 2015-2017 without specifying to which Member States these refer to. The Office notes that the amounts are expressed in pounds. The applicant has not provided any additional documentation capable of corroborating its statements.

As regards the three letters, they refer to the United Kingdom and contain assertions which are subjective in nature as based mainly on personal opinions. These letters are all dated March 2017 and thus after the application date. Only the letter of Mr Roger Fox states that he “first became aware of Modtruss when it was displayed by Triple E at the ABTT Theatre Show in 2015”. However, this one reference to the date before the filling of the application, is clearly unsufficient for the purpose of establishing acquired distinctiveness. Furthermore, the Office notes that Mr Fox refers to the sign applied for as “Modtruss”, which does not reflect the sign at issue.

Based on the evidence presented, it is impossible to conclude that at least a significant proportion of the public throughout the European Union identifies the girder as originating from the applicant, since there is no evidence from most EU Member States and generally not for EU Member States other than UK that consumers recognise the sign as a distinctive mark. Even though the evidence submitted does show some use of the sign, none of the items of evidence submitted by the applicant makes it possible to establish that the relevant public, or at least a significant proportion thereof perceives the sign at issue as an indication of the commercial origin of the goods in question because of the extensive use of that sign. No information which could objectively reflect the consumers’ perception of the mark, such as surveys, has been submitted.

In consequence, the documents submitted in their entirety are neither qualitatively nor quantitatively sufficient to demonstrate that at least a significant proportion of the relevant public throughout the European Union, by virtue of the sign in question, is able to identify the goods concerned as originating from a particular undertaking.

Marzena MACIAK