Refusal of application for a European Union trade mark

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

Alicante, 07/04/2017

M.J.P. DEANS

Lane End House

Hookley Lane

Elstead, Surrey GU8 6JE

REINO UNIDO

Application No:	016111511
Your reference:	T11369EM
Trade mark:	Springsafe
Mark type:	Word mark
Applicant:	Plum Products Holdings Pty Ltd Suite 303, Military Road Neutral Bay New South Wales 2089 AUSTRALIA

The Office raised an objection on 08/12/2016 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 08/02/2017, which may be summarised as follows:

1. The applicant accepts that the mark is made up of the words “spring” and “safe”, accepts the definitions supplied by the Office in respect of those elements, and agrees with the findings made on the relevant public. However, the applicant submits that the combination of those terms here constitutes a neologism which is distinctive, since the normal meaning for nouns followed by the word “safe” in English is “safe for” e.g childsafe (meaning safe for children). By this reasoning, the consumer would understand the sign as meaning “safe for springs”, which does not make sense in relation to the goods.

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 specified, which may all deploy spring mechanisms. There is no perceptible difference between the meanings supplied and the meaning perceived by attentive consumers. The mark is entirely made up of terms which actually describe characteristics of all of the goods applied for.

The office fully agrees that nouns followed by “safe” can have the meaning “safe for”, but does not accept that nouns (or verbs) followed by the adjective “safe” may only take this meaning. The targeted consumer will not perceive a senseless meaning where a sensible one pertains:

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).

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).

Trampolines and other gymnastic sporting articles, games and playthings do deploy (or may deploy) spring mechanisms. It is in the interests of all consumers that those mechanisms are safe. Safety apparatus, safety nets and enclosures for use with games, playthings, trampolines or other gymnastic articles are products which are used with sprung products. It is clear from the specification itself that they are to be deployed in an ancillary way.

The Office does not accept that the mark is not descriptive simply because the word “safe” may mean “safe for”. The term “Springsafe” conveys a “sufficiently direct and specific” message (judgment of 20/07/2004, T‑311/02, ‘LIMO’, paragraph 30), which the attentive English-speaking consumer is capable of immediately perceiving, in relation to sprung goods and safety apparatus used in conjunction with such goods. Taken as a whole, the words “Springsafe” immediately inform consumers without further reflection that the goods applied for are safety apparatus, trampolines, play things and sporting articles which deploy springs in a secure or danger-free manner, as previously indicated.

It is not necessary that the mark have just one interpretation in order to be descriptive for the purpose of the Regulation. It is clear that the mark is the exact sum of its parts, no more when percieved in concreto.

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 descriptive word elements of the mark have been considered both individually and as a whole. The mark will be perceived as a meaningful expression which imparts an obvious message about characteristics of the goods applied for. There is no perceptible difference between the individual meanings of the word elements making up the mark, and their meaning when viewed together as a whole.

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. The mark designates characteristics of all of the specified goods. 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.

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 16 111 511 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