Refusal of application for a European Union trade mark

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

Alicante, 29/08/2016

Modern Times Ltd

7 Bridge Street

Winchester Hampshire SO23 0HN

REINO UNIDO

Application No:	015531809
Your reference:
Trade mark:	Cycle Power
Mark type:	Word mark
Applicant:	Modern Times Ltd 7 Bridge Street Winchester Hampshire SO23 0HN REINO UNIDO

The Office raised an objection on 28/06/2016 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 05/08/2016, which may be summarised as follows:

1. The mark has become synonymous with the applicant´s brand “Cytronex”. While the term might seem obvious in relation to electric bicycles, it has not been used before in that context. The applicant accepts that the words may be too obvious in relation to the class 11 and 12 goods, but the class 9 goods are not necessarily cycle-related. Therefore, the “cycle” part of the mark is required to ensure customers know what the electronic devices specified are for. The applicant would be happy to accept a condition on the application that the mark would only be used alongside the word Cytronex or Cytronex 1.

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.

The Office based its objection on the primary dictionary definitions of the individual word elements making up the mark. The definitions come from Collins English Dictionary, a primary objective source of the English language as spoken and perceived. The combined objective definitions make perfect sense together in the context of the goods. There is no perceptible difference between the meanings supplied and the meaning perceived. The mark is entirely made up of terms which actually describe characteristics of all of the goods applied for. The applicant itself acknowledges the obviousness of the expression in relation to the goods in class 11 and 12. The Office maintains that the expression is just as obvious in relation to the goods in class 9. It is obvious that the purpose of the batteries and components is to give a cycle power, as confirmed by the applicant. Otherwise the term would be misleading.

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.

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).

As regards the argument that third parties, and more particularly its competitors, do not need to use or do not use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

The mark conveys a “sufficiently direct and specific” message which the average English-speaking consumer is capable of immediately perceiving in relation to bicycles /motorcyclesand closely related goods. The power-pack of an electric bike clearly gives it the particular capacity ascribed to electronic bikes. (judgment of 20/07/2004, T‑311/02, ‘LIMO’, paragraph 30). Taken as a whole, the words ‘´Cycle Power” immediately inform the average consumer without further reflection that the goods applied for are batteries, chargers, lights, bicycles, and vehicles together with ancillary components, apparatus and instruments, all of which are used to give bicycles or motorcycles a specific capacity.

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). The mark is the exact sum of its parts. Inventors of even novel products choose descriptive terms at their peril as such terms may not be the subject of EU-wide protection.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

The descriptiveness of the word elements of the mark have been considered both individually and as a whole. The mark will be perceived as a grammatically correct and meaningful expression which imparts an obvious message about the nature of the goods applied for.

It is not possible to overcome an absolute grounds objection by including a condition that the mark will be used with origin-positive words such as Cytronex. The mark Cytronex/Cytronex 1 Cycle Power would have to be the subject of a separate application/registration process.

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

The mark is exclusively descriptive and apposite in relation to the goods applied. It does not feature any additional element other than the dictionary-supported definitions, which could confer upon it the minimum degree of distinctiveness necessary for it to function as a badge of origin.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C‑104/00 P, ‘DKV’, paragraph 21). This is clearly applicable to the present case.

Given that the mark has a clear descriptive meaning in relation to the goods applied for within the English-speaking territory of the EU, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

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 15 531 809 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.

Keeva DOHERTY