Refusal of application for a European Union trade mark

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

Alicante, 06/03/2017

Carmen - Augustina Neacsu

12/3 Rozelor Street

430293 Baia Mare, Maramures

RUMANIA

Application No:	15 905 623
Your reference:
Trade mark:	METALICA
Mark type:	Figurative mark
Applicant:	S.C. METALICA S.A. Str. Uzinelor Nr. 10 410605 Oradea, Judet Bihor RUMANIA

The Office raised an objection on 09/11/2016 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 09/01/2017, which may be summarised as follows:

• The trade mark applied for has acquired distinctiveness through use.

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).

The Office recalls that, in accordance with Article 7(3) EUTMR, the absolute grounds for refusal referred to in Articles 7(1)(b) to (d) EUTMR shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

Article 7(3) EUTMR requires extensive use of the sign by the applicant and envisages something beyond mere use. Application of this provision requires that, in consequence of the applicant’s actions, the sign is perceived by the relevant public as an indication that the goods and services at issue originate from a particular undertaking.

In order to assess whether the mark acquired distinctive character by virtue of use, the following may inter alia also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (18/06/2002, C-299/99, Remington, EU:C:2002:377, 16/02/2017, R 1352/2016-5, EXPRESSVPN § 60). If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must in any event hold that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied (18/06/2002, C-299/99, Remington, EU:C:2002:377, § 64). When that is the case, the sign has gained a new significance and its connotation, no longer purely descriptive or non-distinctive, justifies its registration as a trade mark (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 47).

In accordance with settled case-law, a mark can be registered by virtue of Article 7(3) EUTMR only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such a character (09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 49).

In the present case, the relevant public consists of Spanish-, Portuguese- and Romanian-speaking consumer in the Union.

Furthermore, the applicant must demonstrate that the mark has become distinctive through use before the application was filed, namely 05/10/2016 (C-542/07 P, Pure Digital, EU:C:2009:362, § 60).

The applicant filed the following evidence:

• Annex 01 – print screen from the website listafirma.ro;

• Annex 02 – print screen from applicant’s website www.metalicaoradea.ro ;

• Annex 03 – print screen from applicant’s Facebook account (http://www.facebook.com/metalicaoradea );

• Annexes 04-06 - Certificates for the registered trademarks “METALICA” at OSIM (trade mark No. 39480/26.11.1998, renewed in 2008; renewal certificate for the trade mark No. R15383/05.12.1998, respectively the second renewal as 2R39480 in 2008) and Registration Certificate for the design No.021259/28.06.2016;

• Annex 07 - copy of a contract with an internet provider;

• Annexes 09-15 - invoices issued by S.C. METALICA S.A. between 2003 and 2015, to companies from Europe (Germany, Italy, Hungary and Holland).

The Office, having carefully examined the materials submitted by the applicant, is not persuaded that it is sufficient to conclude that the mark applied for has acquired distinctiveness through use in application of Article 7(3) EUTMR, for the following reasons:

The application covers the following goods:

Class - 6	Articole mici din metal, si anume: accesorii pentru marochinarie, scule de mână confecţionate din metal şi matriţe din metal.
Class - 7	Motoare, componente pentru transmisii şi cuplaje pentru maşini destinate  maşinilor de gătit, hotelor de bucătărie şi centralelor termice de apartament.
Class - 8	Scule de mână.
Class - 11	Aparate de iluminat, de încălzire, de producere a aburului, de gătit, frigorifice, de uscare, de ventilare, de distribuţie a apei şi instalaţii sanitare.

With regard to the lack of distinctiveness of the mark applied for and, as the specifications claimed cover the abovementioned goods, the words ‘METALICA’ merely serve to describe the kind, component or constituent and/or as a description of the principal characteristic (colour/shine) of the goods in question.

Based on the aforesaid, it is concluded that the use of the mark should be relatively long-lasting and extensive before the filing date of the application in order to establish that the mark has acquired distinctiveness at the date of filing.

The evidence filed by the applicant in the present case, consists almost exclusively of data emanating from itself (Annexes 2 and 3).

The Office recalls, however, that the assessment of the distinctive character does not depend on whether the sign is actually used but whether it enables the relevant public to distinguish the goods and services so designated from those of the other traders (see 30/04/2003, T-707/13 and T-709/13, BE HAPPY, EU:T:2015:252, § 52 and the jurisprudence cited there).

The evidence filed shows that the expression has been used as part of applicant’s trade name (SC METALICA SA, the applicant) on invoices submitted to companies in Germany, Italy, Hungary and Holland, but also in contracts signed with service providers.

However, none of the abovementioned countries are relevant for the public for which the objection has been raised (Spanish-, Portuguese- and Romanian-speaking consumer in the Union). Consequently, the evidence submitted does not relate at any of the relevant territory.

As regards the Annex 7, the Office fails to see why a contract with an internet provider is relevant in the present case.

In addition, the evidence submitted does not contain any material that would show conclusions on the consumers’ perception of this indication.

Furthermore, the evidence does not clearly indicate the extent of use in all the territories concerned prior the filing date.

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).

‘In addition … references to national registrations conferred by Member States which do not have Spanish, Portuguese and Romanian as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

Moreover, the earlier trade marks are nor identical with the present application, therefore not relevant in the present case. In addition, the Office fails to see why the design presented is relevant for demonstrating that the sign applied for is distinctive for the goods applied for.

In view of the foregoing the Office concludes that the evidence filed does not substantiate the claim that the expression ‘METALICA’ has become recognisable as the applicant claims. As the conditions for the application of Article 7(3) EUTMR are not met, the sign has to be refused pursuant to Article 7(1)(b) and Article 7(1)(c) EUTMR in conjunction with Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for figurative European Union trade mark No 15 905 623 is hereby rejected for the following goods:

RO-6 Articole mici din metal, si anume: accesorii pentru marochinarie, scule de mână confecţionate din metal şi matriţe din metal.

RO-7 Motoare, componente pentru transmisii şi cuplaje pentru maşini destinate maşinilor de gătit, hotelor de bucătărie şi centralelor termice de apartament.

RO-8 Scule de mână.

RO-11 Aparate de iluminat, de încălzire, de producere a aburului, de gătit, frigorifice, de uscare, de ventilare, de distribuţie a apei şi instalaţii sanitare.

The application may proceed for the remaining services, namely for:

RO-35 Publicitate, administrare afaceri.

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.

Roxana PISLARU