Refusal of application for a European Union trade mark

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

Alicante, 05/10/2016

SILVERMAN SHERLIKER SOLICITORS

7 Bath Place

London EC2A 3DR

REINO UNIDO

Application No:	015424121
Your reference:	007711/0061/CJS/RC
Trade mark:	EASI-TILE
Mark type:	Word mark
Applicant:	Easigrass Distribution Limited The Old Railway Yard, Lional Road South Brentford TW8 0JA REINO UNIDO

The Office raised an objection on 31/05/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 29/07/2016, which may be summarised as follows:

1. The applicant amended the list of the goods as follows:

Class 19 Roof coverings, not of metal, made from rolls of artificial grass; roof coverings, not of metal, made from sheets of artificial grass; surfacing materials of artificial grass fibers; grass roof coverings; artificial grass, turf and lawn roof coverings; roofing materials; roofing, not of metal; textured artificial grass surfaces for roofs; building materials used for surfacing.

Class 27 Artificial grass, turf and lawn; floor and ground coverings of artificial grass in sheet or roll form; carpets of artificial grass.

2. The expression ‘EASI-TILE’ is a neologism.

3. The mark has to be considered as a whole. It has no direct and descriptive link to the goods.

4. The sign is, at most, allusive.

5. The EUIPO also granted protection for the mark ‘EASIGRASS’ (EUTM No 10 500 213) in Classes 19, 27 and 35 for the same applicant.

The Office has taken due note of the applicant’s limitation to the goods applied for in Classes 19 and 27, and can confirm that its records have been amended accordingly.

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 for the following goods:

Class 19 Roof coverings, not of metal, made from rolls of artificial grass; roof coverings, not of metal, made from sheets of artificial grass; surfacing materials of artificial grass fibers; grass roof coverings; artificial grass, turf and lawn roof coverings; textured artificial grass surfaces for roofs.

Class 27 Artificial grass, turf and lawn; floor and ground coverings of artificial grass in sheet or roll form; carpets of artificial grass.

The objection is maintained for the remaining goods, namely for

Class 19 Roofing materials; roofing, not of metal; building materials used for surfacing.

Article 7(1)(c) EUTMR — general remarks

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).

In the present case, the trade mark applied for consists of the word ‘EASI-TILE’, which means ‘a slab made of different materials that are either lightweight or effortless to install’. Although this combination of words is not found as such in the dictionary, its meaning can be easily understood or deduced by the relevant English-speaking part of the public, as it is composed of the words ‘EASI’ and ‘TILE’. The first word is a misspelt form of the term ‘EASY’, and means ‘achieved without great effort; presenting few difficulties; without difficulty or effort’ (information extracted from Oxford Dictionaries on 04/10/2016 at https://www.oxforddictionaries.com/). The second word means ‘a thin rectangular slab of baked clay, concrete, or other material, used in overlapping rows for covering roofs; A thin square slab of glazed ceramic, cork, linoleum, or other material for covering floors, walls, or other surfaces’ (information extracted from Oxford Dictionaries on 04/10/2016 at https://www.oxforddictionaries.com/). The structure of this expression does not diverge from English grammar rules (adjective placed before the noun) but rather complies with them. Therefore, the relevant consumer will perceive it not as unusual but rather as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as unusual but, rather, as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, namely roofing materials; roofing, not of metal; building materials used for surfacing, are goods that are either lightweight or are designed to allow easy installation. The mark describes, in a quite unambiguous way, the characteristics of the goods by giving consumers relevant information as regards the kind and the quality of the goods offered.

The goods for which registration is sought target the average consumer and the professional public. It is clear that the relevant consumer, in particular the specialist public but probably also a large part of the general public, will understand the word itself, or the combination of words, as a meaningful expression referring to roofing and building materials in relation to the contested goods. The majority of the relevant consumers will immediately understand that the goods for which registration is sought are related to the construction industry.

The mark applied for, ‘EASI-TILE’, thus clearly contains obvious and direct information about the kind and the quality of roofing and building materials used by the contested goods. Although the combination as such might be new, the words that make up the mark applied for are very common words within the area of construction or building industry; the expression ‘EASI-TILE’ is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. As regards the combination of the two words, it does not contain, in relation to the separate components, any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

Article 7(1)(b) EUTMR — general remarks

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (judgment of 09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

• Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘EASI-TILE’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods are roofing and building materials.

The mark is composed of the expression ‘EASI-TILE’, written in standard upper case characters. The goods to which an objection has been raised and which are covered by the mark applied for are roofing materials; roofing, not of metal; building materials used for surfacing, which are specialised goods, and they target average consumers and the professional public. In view of the nature of the goods in question, the degree of awareness of the relevant public will vary from average to high.

A mark that, as in the case in question, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods and services under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish the said goods from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand basic English words will not see the mark as a badge of a particular trade origin for the goods at issue but rather as a descriptive word and an obvious expression.

• The applicant argues that the mark is allusive

The Office agrees with the applicant that trade marks that are merely suggestive or allusive or that require further interpretation must not be refused registration. However, the sign ‘EASI-TILE’ cannot be perceived as anything other than an indication of the characteristics of the goods in question. The message expressed by the sign applied for is clear, direct and immediate to the relevant public. It is not vague in any way, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The word ‘EASI-TILE’ is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

Furthermore, there is nothing in the word that might, beyond its obvious direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication of descriptive meaning and, when it is applied to a variety of goods, the relevant consumer would immediately be given an indication of a characteristic of such goods (i.e. their kind, quality and intended purpose).

• The applicant argues that the word is a neologism

Since the trade mark at issue 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 mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 – T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

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.)

As regards the applicant’s argument that a similar registration has 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).

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which protection is sought will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

— Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 15 071 971 is hereby rejected for the following goods:

Class 19 Roofing materials; roofing, not of metal; building materials used for surfacing.

The application is accepted for the remaining goods.

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.

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