Refusal of application for a European Union trade mark

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

Alicante, 25/01/2017

ALBRIGHT IP LIMITED

County House Bayshill Road

Cheltenham Gloucestershire GL50 3BA

REINO UNIDO

Application No:	015563018
Your reference:	T003318EM00
Trade mark:	FLEXARM
Mark type:	Word mark
Applicant:	FlexArm, Inc. 851 Industrial Drive Wapakoneta Ohio 45895 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 06/07/2016 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 04/11/2016 after an extension of two months, which may be summarised as follows:

1. The mark is not descriptive.

2. The mark is distinctive.

3. Similar marks have previously been accepted by the Office in Class 7.

4. The mark has been accepted for registration in Canada, Mexico and the USA the USA, Canada and Mexico.

5. If the application is not accepted for all the goods for which application is sought, the applicant wishes to amend the list of goods in Class 7.

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.

Descriptiveness

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).

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to 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 applicant argues that there are no elements that indicate a separation of the mark into the words ‘flex’ and ‘arm’. Furthermore, the word ‘FLEXARM’ does not exist in English. Therefore, the meaning is not immediately discernible for the relevant consumer upon seeing or hearing the mark for which registration is sought. The applicant is of the opinion that the Office’s interpretation has been extended too far in presuming that the consumers would separate and analyse the mark’s individual components.

The fact that the term ‘FLEXARM’ cannot be found in any dictionary is not surprising, as a dictionary cannot possibly contain all the word combinations that can be formed by conjoining the words in a language.

Furthermore, 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).

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).

The combination of the words ‘flex’ and ‘arm’ is not an unusual combination in relation to the goods in question. The goods for which registration is sought include assembly arms, torque arms and grinding arms. Therefore, the consumer is already led to think about machines and tools that have or take the form of an arm. In addition, the arms on such machines and tools are often movable or flexible. ‘Flex’ is a commonly used abbreviation for something flexible and is well known by the relevant consumers. Therefore, little cognitive process is needed to separate the expression ‘FLEXARM’ into the two components ‘FLEX’ and ‘ARM’. In addition, and contrary to the applicant’s arguments, the words are not vague when used in connection with the goods for which registration is sought, and there is a clear and direct link between these goods and the mark as a whole.

Although the two components ‘flex’ and ‘arm’ can have several meanings, 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 expressions ‘flex arm’ and ‘flexible arm’ are often used in the description of machines and tools that are similar to for those for which registration is sought. See the following examples (from internet searches performed on 25/01/2017):

http://www.chinaseniorsupplier.com/Machinery/Metal_Metallurgy_Machinery/661297640/china_electric_manual_Flex_Arm_Tapping_Machine.html

http://noelmachinery.in/flexible-arm-tapping-machine/

http://www.hytekmarketing.biz/others/flexible-arm-tapping-machines.php

Furthermore, the expression ‘FLEXARM’ is used to describe flexibility or movability of arm-like tools and the word combination would not, therefore, be perceived as unusual by the relevant consumer, even if the expression is not in the English dictionary. See for example (from internet searches performed on 25/01/2017):

http://www.cavus.eu/en_/mounts/tv-wall-mount/m-vesa-flexarm-360-iii-black-15-32.html

http://www.reikle.de/en/Flexarms-with-RSS/Reikle-Flexarm-with-RSS-and-YS-Adapter.html

Therefore, in relation to the applicants goods, which include assembly arms, torque arms and grinding arms, the relevant consumer would immediately link the expression ‘FLEXARM’ with a flexible arm-like part of the machine or the tool. Therefore, the relevant consumer would see the expression as describing a feature and/or function of the goods in question.

The mark is distinctive

The applicant argues that the high degree of specialisation of the consumers has not been taken into account when making the assessment of the mark.

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 demonstrated above, the relevant specialist consumer would easily make the link between the mark and the goods for which application is sought. Contrary to the applicant’s arguments, the relevant consumers would not perceive the expression ‘FLEXARM’ as a unique identifier or a fanciful word, and the expression as a whole is therefore non-distinctive.

Similar marks accepted by the Office

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).

‘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).

Mark registered at national offices

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).

Amendment request

The applicant suggests amending the list of goods for which registration is sought in Class 7, should the Office not accept the mark for registration for all the goods sought. However, such a conditional request cannot be granted.

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 15 563 018 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.

Anja Pernille LIGUNA