Refusal of application for a European Union trade mark

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

Alicante, 26/05/2017

Milojevic, Sekulic & Associates, S.L.

Dr. Severo Ochoa num.3, Bl.IV, P.2, 1-D

E-03550 San Juan (ALICANTE)

ESPAÑA

Application No:	015959216
Your reference:	FTM-241499-00
Trade mark:	ROBUSTSERVO
Mark type:	Word mark
Applicant:	NSK Ltd. 6-3 Osaki 1-chome Shinagawa-ku, Tokyo JAPÓN

The Office raised an objection on 14/12/2016 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 22/03/2017, which may be summarised as follows:

1. The applicant has requested a limitation

2. The words have more dictionary references

3. The word ‘robust’ has been used by the applicant

4. The level of attention for the goods in question is high

5. The goods have a different purpose than described by the Office

6. The Office has registered other marks with the word ‘robust’

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 applicant has requested a limitation

By virtue of a letter dated 06/03/2017 the applicant requested a limitation. The applicant requested the Office to limit the goods to: Rolling bearings [machine elements not for land vehicles].

The limitation is valid; however, as it will be expounded in this letter, such limitation will not overcome the objection which was raised by the Office. The fact that the bearings are of the ‘rolling’ type does not exclude the possibility of them being ‘robust’ and used as ‘servos’. Bearing this in mind, the Office believes that the objection should not be waived and thus the same objection which was issued by the Office will be maintained.

The words have more dictionary references

The applicant submits that there are other definitions, apart from the ones listed by the Office for the words ‘Robust’ and ‘Servo’, however the Office believes that this is a secondary issue. The definitions provided by the Office are also plausible definitions. There is no obligation on the part of the Office to provide, every possible definition of a word.

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.)

Furthermore, the applicant holds that the mark applied for is an invented word and is not found in dictionaries. The Office does not find this argument convincing. The fact that the mark is not found in dictionaries does not render a mark distinctive or non-descriptive. In fact it is the opinion of the Office that English speaking consumers in the EU will perceive the sign applied for as a word composed of two conjoined words. Therefore these consumers will see the words ‘robust’ and ‘servo’ with no difficulty. There are no mental steps required to understand the mark applied for.

The word ‘robust’ has been used by the applicant

The applicant holds that the word ‘robust’ is already being used by the applicant on its goods, and it argues that this word is now a brand sign, rather than a descriptive term. The Office notes that the sole fact that the applicant has made use of the word ‘robust’ for other goods does not render the word less descriptive or distinctive. No convincing evidence was submitted showing that consumers will indeed make a connection between the word ‘robust’ and the applicant’s goods. In this absence, the Office believes that the word will be understood in its natural sense as defined in the dictionary and as explained by the Office.

The level of attention for the goods in question is high

The applicant claims that the level of attention for the goods in question is high because the relevant consumers for these goods will be engineers and mechanics. The Office notes 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).

Therefore even considering the high level of attention of the consumers in question, the Office believes that the mark will still be deemed to be descriptive and non-distinctive.

The goods have a different purpose than described by the Office

The applicant holds that the applicant’s goods bearings are not used in conjunction with servos. However the Office is of a different opinion. A simple online Google search shows that there are bearings on the market having servos. These are just some examples:

http://www.bpesolutions.com/productimages/mec.parts/mch2.html accessed 26/05/2017

http://www.futabarc.com/accessories/futm2355.html accessed 26/05/2017

http://rcbearings.co.uk/index.php?route=product/category&path=163_70 accessed 26/05/2017

It is the opinion of the Office that the mark ‘robustservo’ for bearings in class 7 will be perceived as a bearing that is robust and will be used as a servo. Therefore the mark will not be seen as a trade mark, as a business identifier, but rather as a descriptive word which gives information as to its use and its quality.

The Office has registered other marks with the word ‘robust’

The applicant claims that the Office has accepted similar marks containing the word ‘robust’. 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).

Having said that, the Office fails to see the similarity between the mark applied for in this case and the marks cited by the applicant. It is the combination of the words constituting the mark, together with the goods applied for, that is important when examining a mark. In the case at hand, the Office believes that there is a direct relation between the goods and the mark applied for. This nexus renders the mark descriptive and non-distinctive.

The English speaking consumer in the EU will understand the meaning of the mark.

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 15 959 216 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.

Alistair BUGEJA