Refusal of application for a European Union trade mark

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

Alicante, 05/07/2016

Risto Herrala

Adjutantinkatu 8 F 29

FI-02650 Espoo

FINLANDIA

Application No:	015457716
Your reference:
Trade mark:	EEp
Mark type:	Word mark
Applicant:	Risto Herrala Adjutantinkatu 8 F 29 FI-02650 Espoo FINLANDIA

The Office raised an objection on 03/06/2016 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 20/06/2016, which may be summarised as follows:

1. The applicant indicates that EEp is too close to EEP which stands for ‘Energy and Environment Partnership’.

2. Since EEp is in the scientific domain and is used in the field of the global climate change.

3. The applicant request to revise the application, and apply for a trademark other signs.

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).

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.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

In this case, as the applicant recognizes, the requested term EEp is recognized as 'Energy and Environment Partnership', and the fact that the sign differs in a letter "P" uppercase or lowercase does not prevent consumers perceive the sign as an indication of services requested.

In reference to requested issue of change of sign considering Articles 43 and 44 EUTMR, and Rule 3 and Rule 13(a) EUTMIR, the change of sign is not acceptable.

The Office’s practice on amendments of the mark representation is very strict. The two conditions for allowing a change to the mark once filed are cumulative:

• the mistake must be obvious, and

• the amendment must not substantially change the mark as filed.

Even if the amendment is not a substantial one, if the mistake is not obvious, the Office will not accept the amendment.

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 15 457 716 EEp is hereby rejected 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.

Valentín ALONSO MORENO