Refusal of application for a European Union trade mark

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

Alicante, 04/11/2016

Norton Rose Fulbright LLP

Taunustor 1 (TaunusTurm)

D-60310 Frankfurt am Main

ALEMANIA

Application No:	015410715
Your reference:	MRCGG22006
Trade mark:	WE MAKE ENERGY FLOW
Mark type:	Word mark
Applicant:	MRC Global Inc. Fulbright Tower, 1301 McKinney Street, Suite 2300 Houston Texas 77010 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/05/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 27/07/2016, which may be summarised as follows:

1. WE MAKE ENERGY FLOW should be seen as suggestive or allusive trade mark, but not denied trademark protection under Article 7(1)(c) EUTMR. WE MAKE ENERGY FLOW is not a standard formulation or a normal way of referring to the nature of the applied for services. A Google search for WE MAKE ENERGY FLOW and distribution does not produce relevant hits other than those related to the applicant. There are no entries in dictionaries for WE MAKE ENERGY FLOW and the term is not used in a descriptive manner on internet websites. The relevant public would not be able to immediately determine without further thought, the services covered by the trade mark.

2. The mere fact that the applied for trade mark’s constituent words (when considered individually) may indirectly refer to the characteristics of certain goods does not render the trade mark descriptive as a whole and in particular not for the services of the specifications of this application. The meaning attributed by the Examiner to the four components of the dissected trade mark WE MAKE ENERGY FLOW, namely WE, MAKE, ENERGY AND FLOW, falls short of the numerous meanings which these words can have according to the source cited by the Examiner, and there is nothing to suggest that the meaning highlighted by the Examiner would be the only meaning to occur to the relevant public, or indeed that this meaning would occur at all.

3. WE MAKE ENERGY FLOW consists of a unique combination coined by the applicant that is not used in common parlance. The perceptions of the average consumer, who should be reasonably well informed and reasonably observant and circumspect, should be taken into account when determining the question of distinctiveness. We consider that the average consumer of distributorship services will be careful in selecting such specialized services, and may conduct background research into companies and categories of cover before deciding on a policy. We consider the average consumer of such services is likely to view the trade mark as an indicator of trade origin rather than a descriptive term. The consumers of such services are not individuals but sophisticated corporations in the oil and gas industries. These consumers are ever more likely to view the trade mark as indicative of the applicant’s services as opposed to descriptive use.

4. They are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question. The Court of Justice has provided the following criteria that should be used when assessing the distinctive character of a slogan. An advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it: has a number of meanings, and or constitutes a play on words and/or introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or has some particular originality or resonance, and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort. As in the present case there is no direct and specific relationship between the components of the applied for trade mark and the services in question, the public concerned will not immediately perceive, without further thought, the applied for trade mark as a description of the category services in question or one of their characteristics.

5. The applicant’s trade mark has already been accepted registration in class 35 in other jurisdictions.

6. There is a large number of word marks comprising the denomination ENERGY which have been registered in the European Union for class 35.

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 waive the objection based on 7(1)(c) but will maintain the objection for 7(1)(b).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The applicant argues that the sign in question will be perceived as a trade mark by the relevant public because it complies with criteria set forth by the Court of Justice with regards to slogans, and because it has no relationship to the services applied for. Neither of these suppositions are correct.

The services applied for are “Distributorship services of industrial and energy-related pipes, valves, fittings and valve automation, and specialty-related oil field equipment and supplies.” Pipes, valves, fittings, etc. are used to “make energy flow”. There is a very obvious relationship between the slogan of the applicant and the distributorship services of goods such as industrial and energy-related pipes, valves, etc. which are used to “make energy flow”. The slogan of the applicant promotes the fact that the equipment that they distribute is used for the continuous supply of energy. In other words, the slogan is simply promoting the services of the applicant.

Moreover, when examined using the criteria put forth by the Court of Justice, one can see that the slogan does not have numerous meanings, does not constitute a play on words, does not introduce elements of conceptual intrigue or surprise (the slogan merely describes the benefit of their services), does not have any particular originality, and does not trigger in the minds of the relevant public a cognitive process or require an interpretative effort. In fact, when the relevant public is presented with the slogan in combination with the services applied for, they will not see it as an indication of trade origin, but rather as a laudatory promotional statement demonstrating the services provided.

Furthermore, even if this slogan were to comply with some of these criteria, the fact that a sign can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84). In the case of WE MAKE ENERGY FLOW, there are many other companies in the same or similar sectors of the applicant which also “make energy flow”, such that there is nothing distinctive about the phrase which could possibly distinguish them from others, i.e. indicate the applicant as an origin of trade.

In addition, in view of the nature of some of the services 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).

Also, 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).

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).

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).

Moreover, …‘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).

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 015410715 is hereby rejected for all the services 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.

Herbert JOHNSTON