Refusal of application for a European Union trade mark

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

Alicante, 19/01/2017

FORRESTERS

Rutland House

148 Edmund Street

Birmingham B3 2JA

REINO UNIDO

Application No:	015703812
Your reference:	B25483EM-JCH
Trade mark:	VEHICLE RESILIENCE
Mark type:	Word mark
Applicant:	HORIBA MIRA Limited Watling Street, Nuneaton, Warwickshire CV10 0TU REINO UNIDO

The Office raised an objection on 17/08/2016 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 11/10/2016, which may be summarised as follows:

1. Descriptiveness/meaning of the mark

The following goods and services that have been objected to by the Office do not relate to vehicles, and therefore the sign ‘VEHICLE RESILIENCE’ is not descriptive to any degree in relation to them:

Class 9 Scientific instruments and apparatus, laboratory instruments and apparatus; test dolls and test models; apparatus for input, recording, analysis, storing, processing and output of measuring and testing data; parts and fittings for all the aforesaid goods; excluding any goods relating to the dental or oral surgery fields.

Class 16 Printed publications, reports and monographs; printed charts and tables relating to scientific and industrial research, evaluation and testing.

Class 42 Research and design services, product and software development; technical test evaluation, trials and analytical services; technical project management; rental of scientific and engineering and trials equipment and facilities; research relating to security; testing of security products; calibration [measuring]; calibration of instruments and machines; chemical analysis services for use in evaluation; materials evaluation and testing; analysis and evaluation of product design and development; advisory and consultancy services relating to scientific and technological research, product development and technical problem resolution; development of prototypes and products; electrical, engineering and mechanical research; management of scientific and engineering research projects; preparation of reports relating to scientific and technical research; laboratory services, research and analysis; laboratory testing of materials; design and development of robots; computer and computer software research; design and maintenance of software; design and development of computer based networks, computer codes, computer languages; management of and conducting of technical trials for others; development of engines and industrial machinery; development of testing methods; engineering services and technological studies relating to robots; rental and leasing of scientific and engineering test facilities, including wind tunnels, climatic test facilities, turbine test facilities; engineering project management services; management of scientific research projects; project management [design]; advisory services relating to design and industrial engineering; computer aided design engineering services; computer engineering and consultancy services; electrical engineering services; engineering; engineering project management services; engineering project studies; engineering services relating to robotics, communications systems, electronic systems; professional consultancy relating to ergonomics; 3D and 4D scanning and modelling services.

Furthermore, there is not a sufficiently close relationship between the remaining goods and services objected to by the Office and the meaning of the mark ‘VEHICLE RESILIENCE’.

The verbal element ‘RESILIENCE’ of the mark applied for has two meanings: ‘the capacity to recover quickly from difficulties’ and ‘the ability of a substance or object to spring back into shape; elasticity’. Furthermore, when the word ‘RESILIENCE’ is used in combination with the word ‘VEHICLE’, there is an obvious element of contradiction, as a vehicle is not able to recover quickly from difficulties or structural damage and is not able to spring back into shape. Moreover, the word ‘RESILIENCE’ is not commonly used to describe a vehicle and the words ‘VEHICLE’ and ‘RESILIENCE’ are not normally associated with each other because of their contradictory nature. Therefore, there is no direct or specific relationship between the meaning of the mark and the goods and services for which registration is sought.

2. Distinctiveness of the mark

The word ‘RESILIENCE’ is not commonly used in connection with any of the goods or services objected to because the word has no direct connection to any of them. Although the word ‘VEHICLE’ may lack distinctive character in relation to the goods in question, the composite mark is inherently distinctive and the mark as a whole will be perceived as an indication of the commercial origin of the goods and services objected to.

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.

1. Descriptiveness/meaning of the mark

Article 7(1)(c) EUTMR pursues an aim that is in the public interest, by requiring that signs and indications that are descriptive of the characteristics of goods or services in respect of which registration is sought may be freely used by all. This provision, therefore, prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks. The public interest requires that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods, as the Court of Justice has recognised when interpreting Article 3(1)(c) of the Directive (12/2/2004, C-265/00, Biomild, EU:C:2004:87, § 35 and 36, and the decisions cited therein). Therefore, marks consisting exclusively of such signs or indications are unregistrable unless Article 7(3) EUTMR applies.

Furthermore, the Court has stated that 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, Koninklijke KPN Nederland, EU:C:2004:86, § 102).

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).

The applicant argues that some of the goods and services, listed above, do not relate to vehicles and that, therefore, the sign ‘VEHICLE RESILIENCE’ is not descriptive to any degree in relation to them. Moreover, the applicant argues that there is not a sufficiently close relationship between the remaining goods and services and the meaning of the mark applied for.

In the present case, the consumers of the relevant goods and services, mainly professionals, will be perfectly capable of understanding the meaning given by the Office and will immediately link it to the goods and services in question. The mark ‘VEHICLE RESILIENCE’ is composed of two common English words with obvious meanings. As a result, consumers will have specific expectations regarding the characteristics of the goods and services, namely that they are vehicles – or parts thereof – that possess a certain degree of resilience or durability (e.g. in relation to vehicles and parts and fittings herefor in Class 12); scientific, laboratory and measuring apparatus and instruments, including software, intended for testing the resilience of vehicles (e.g. in relation to test dolls and models, computer programmes relating to vehicles in Class 9); or miscellaneous engineering and testing services for the purpose of monitoring the resilience of vehicles (e.g. in relation to inspection of vehicles for safety, performance and roadworthiness, laboratory testing of materials; design and development of vehicles in Class 42). In relation to the contested goods in Class 16, printed publications, reports and monographs; printed charts and tables relating to scientific and industrial research, evaluation and testing, the mark will be perceived as indicating the subject matter of these goods, namely the resilience or durability of vehicles in all kind of situations.

The Office remains of the opinion that, taken at face value, the sign ‘VEHICLE RESILIENCE’ will not be perceived as an indication of trade origin by the relevant public but rather as referring to a quality or characteristic of the goods and services in question, namely that they or the vehicles to which they relate are resilient or that they involve providing vehicles with, or ensuring that vehicles have, a certain degree of durability.

Furthermore, in relation to the applicant’s interpretation of the meanings of the verbal elements of the mark and, in particular, of the word ‘RESILIENCE’, it should be added that, 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, emphasis added).

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 15 703 812 is hereby rejected for the following goods and services:

Class 9 Computer programmes relating to vehicles, internal combustion engines and other propulsion units and components thereof; scientific instruments and apparatus, laboratory instruments and apparatus; measuring and testing instruments and apparatus for use in or in connection with vehicles, internal combustion engines and other propulsion units and components thereof; test dolls and test models; apparatus for input, recording, analysis, storing, processing and output of measuring and testing data; parts and fittings for all the aforesaid goods; excluding any goods relating to the dental or oral surgery fields.

Class 12 Vehicles; apparatus for locomotion by land or air; unmanned vehicles for locomotion by land, air or water; anti-theft and security devices for vehicles [other than locks]; unmanned transportation robots; alarm systems for vehicles; vehicle brakes; electric security apparatus [other than locks] for vehicles; parts and fittings for the aforesaid goods;

excluding bicycles.

Class 16 Printed publications, reports and monographs; printed charts and tables relating to scientific and industrial research, evaluation and testing.

Class 42 Engineering, scientific, technical and technical information consultancy services; research and design services, product and software development; provision of technical consultancy in the field of transport; technical test evaluation, trials and analytical services; technical project management; rental of scientific and engineering and trials equipment and facilities; research relating to security; testing of security products; calibration [measuring]; calibration of instruments and machines; chemical analysis services for use in evaluation; materials evaluation and testing; analysis and evaluation of product design and development; testing, evaluating and assessing robots and vehicles, aviation apparatus and instruments; advisory and consultancy services relating to scientific and technological research, product development and technical problem resolution; development of prototypes and products; electrical, engineering and mechanical research; management of scientific and engineering research projects; preparation of reports relating to scientific and technical research; laboratory services, research and analysis; laboratory testing of materials; design and development of robots, vehicles, aircraft, land craft, watercraft and spacecraft; inspection of vehicles for safety, performance and roadworthiness; research facilities and testing facilities including vehicle and aircraft testing facilities; computer and computer software research; design and maintenance of software; design and development of computer based networks, computer codes, computer languages; management of and conducting of technical trials for others; development of engines and industrial machinery; development of testing methods; engineering services and technological studies relating to robots; rental and leasing of

scientific and engineering test facilities, including wind tunnels, climatic test facilities, vehicle emission test facilities, vehicle testing facilities, turbine test facilities; engineering project management services; management of scientific research projects; project management [design]; forensic advice relating to damage assessment, and vehicle accidents; advisory services relating to design and industrial engineering; computer aided design engineering services; computer engineering and consultancy services; electrical engineering services; engineering; engineering project management services; engineering project studies; engineering services relating to robotics, vehicles, communications systems, electronic systems; professional consultancy relating to ergonomics; 3D and 4D scanning and modelling services;

The application may proceed for the remaining services, as follows:

Class 35 Facilities management, namely business administration.

Class 37 Construction, repair, maintenance and demolition of buildings and civil

engineering structures and infrastructure (including roads and utility supplies); building services; building project management; on site building project management; building construction management; facilities management, namely construction, maintenance and cleaning.

Class 42 Provision of technical consultancy in the field of renewable energy and

the environment; research in the field of environmental protection and

environmental impact assessment; off site building project management; excluding any services relating to the fields of medical research, pharmacy and biotechnology.

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.

Finn PEDERSEN