Refusal of application for a European Union trade mark

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

Alicante, 11/04/2017

REVENTOR

Eggenfeldener Strasse 34

D-84326 Falkenberg

ALEMANIA

Application No:	16 133 613
Your reference:	FLEXILACES
Trade mark:	FLEXILACES
Mark type:	Word mark
Applicant:	REVENTOR Eggenfeldener Strasse 34 D-84326 Falkenberg ALEMANIA

The Office raised an objection on 16/12/2017 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 15/02/2017, which may be summarised as follows:

1. The strict interpretation of ‘flexi’ as a solely English word with a specific and obvious meaning does not reflect the widespread use of this specific combination of letters on the market within the EU, most often without descriptive meaning.

2. Most consumers, who know English only as a second language, will not perceive any descriptive meaning in the trade mark because the English word ‘laces’ does not have similar equivalents in other European languages and is, therefore, unlikely to be interpreted if the exact meaning is unknown or understood.

3. ‘Flexi’ can have several meanings and interpretations and cannot be reduced to the definition used by the Office. The element ‘flexi’, when used in a trade mark, does not immediately convey any descriptive information to the consumer.

4. The element ‘Flex’ is a commonly used name, or part of a name, that can be found in trade marks, company names and product names all around the world, even though it has no explicit or descriptive meaning (Flex Ltd., Flex Marketing Group, Adobe Flex, Ford Flex, Flexitech and Flexi Shoes).

5. The Office focused too strictly on the interpretation of the English meaning, disregarding the fact that the EU contains more non-English-speaking countries than countries where English is the native language.

6. The EUIPO database contains 1 048 applications containing the element ‘flexi’ as part of a trade mark, including EUTM No 88 302 ‘FLEXIFRAME’ and EUTM No 14 030 282 ‘EASY LACES’.

7. The applicant contests the Office’s conclusion that the relevant consumer will understand the words as a meaningful expression, namely ‘flexible laces’ because the interpretation of ‘Flexi’ as ‘flexible’ does not offer any specific information about the product, since no ‘non-flexible’ shoelaces exist or can exist. By design and definition, a shoelace or any kind of cord must be flexible to function and fulfil its purpose.

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.

By prohibiting the registration as EUTMs 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).

In order to refuse to register a trade mark due to its descriptive nature, it is not necessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive of goods or services, or of characteristics thereof. 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 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 should be pointed out that for a sign to be rejected as descriptive, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40).

In the present case, the goods to which an objection has been raised and that are covered by the mark applied for are goods for general consumption that are mainly aimed at average consumers.

In addition, since the mark applied for is made up of English words, its distinctiveness must be assessed first with respect to the English-speaking public. Furthermore, the public by reference to which the absolute ground for refusal must be assessed consists of at least the public in the Member States in which English is an official language, namely the United Kingdom, Ireland and Malta.

In the notice of grounds for refusal, the Office provided the following definitions for the words in the mark:

FLEXI- ‘a combining form representing flexible in compound words’ (information extracted from Dictionary.com on 16/12/2016 at http://www.dictionary.com/browse/flex-?s=t ).

LACES ‘a delicate decorative fabric made from cotton, silk, etc, woven in an open web of different symmetrical patterns and figures’, ‘a cord or string drawn through holes or eyelets or around hooks to fasten a shoe or garment’ or ‘ornamental braid often used on military uniforms, etc’ (information extracted from Collins English Dictionary on 16/12/2016 at https://www.collinsdictionary.com/dictionary/ ).

The applicant disputes the definition of the element ‘FLEXI’, arguing that it can have various meanings, which results in the mark applied for, taken as a whole, having an ambiguous character, such that it can be interpreted in a number of ways. In addition, the applicant submits that the Office has focused too strictly on the interpretation of the English meaning, disregarding the fact that the EU contains more non-English-speaking countries than countries where English is the native language; most consumers, who know English only as a second language, will not perceive any descriptive meaning in the trade mark because the English word ‘laces’ does not have similar equivalents in other European languages and is, therefore, unlikely to be interpreted if the exact meaning is unknown or understood.

With regard to the abovementioned argument, it should be recalled 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).

In addition, a sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the country in question. Therefore, in order to refuse a mark under 7(1)(c) EUTMR, it is sufficient that the mark contains descriptive words that are understood by a significant section of the relevant public in at least a part of the European Union. Consequently, the applicant’s argument that the element ‘Flexi’ might be perceived as a distinctive element in other countries of EU is irrelevant.

The application seeks registration for shoe laces, laces for shoes, laces (shoe -), laces for footwear in Class 26.

Given that the descriptiveness of a sign has to be assessed in relation to the goods or services for which registration is sought and by reference to the relevant public’s perception of it (02/04/2008, T‑181/07, Steadycontrol, EU:T:2008:86, § 38; 21/05/2008, T‑329/06, E, EU:T:2008:161, § 23), the relevant public in the present case is the English-speaking public of the EU, in particular, the public in the Member States in which English is an official language, that is, Ireland, Malta and the United Kingdom.

The mark consists of the conjoined words ‘FLEXI’ and ‘LACES’. Based on the dictionary definitions mentioned above, both words are well known and the relevant consumers will understand the mark ‘FLEXILACES’ as a meaningful expression: a flexible cord or string to fasten a shoe or garment or a flexible decorative fabric or braid, that is flexible laces.

The sign is composed of two conjoined highly descriptive words that are presented in a non-figurative manner. The term ‘FLEXILACES’ suggests flexible, adaptable laces or flexible laces for footwear. Its meaning in this context is clear. In short, from the specification of the goods for which registration is sought, the verbal components are descriptive and the sign applied for, as a compound term, directly describes the characteristics of the laces (see, to that effect, 12/06/2007, T‑339/05, Lokthread, EU:T:2007:172, § 30).

It should be borne in mind that a sign must be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings may designate a characteristic of the goods concerned (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 32). Considering the combined meaning of these words, the Office maintains its opinion that the expression as a whole informs the consumer – immediately and without further reflection – of the kind of goods in question and, therefore, is objectionable under Article 7(1)(c) for the goods for which registration is sought.

With regard to the applicant’s assertion that the element ‘Flex/Flexi’ is a commonly used name, or part of a name, that can be found in trade marks, company names and product names all around the world, even though it has no explicit or descriptive meaning (Flex Ltd., Flex Marketing Group, Adobe Flex, Ford Flex, Flexitech and Flexi Shoes), the Office fails to see how this argument proves that the sign applied for is not descriptive and is distinctive. Company names containing ‘Flexi’ may exist, but that is irrelevant to the present case.

In accordance with the standing case-law of the Court of Justice, distinctive character within the meaning of Article 7(1)(b) EUTMR means that the mark applied for must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking. It thus serves the purpose of distinguishing the trade marked goods or services from those of other undertakings (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

The absolute ground for refusal of a lack of distinctive character and the characteristics of descriptive or usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive (29/04/2004, C-456/01 P & C-457/01 P, Tabs, EU:C:2004:258, § 45-46). Even though the existence of just one ground for refusal is sufficient, they may also be examined cumulatively.

As confirmed by the Court, a mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86 and 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).

A mark that, as in the present case, would simply be seen as descriptive cannot guarantee the identity of the origin of the marked product to the consumer by enabling the consumer, without any possibility of confusion, to distinguish the said product from other products that have different origins. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The Office points out that, in the present case, the unambiguous message is evident, without any particular mental exertion on the part of the relevant public. There is nothing imaginative about the combination of words, beyond its obvious meaning regarding the characteristics of the goods, that would enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned.

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).

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 16 133 613 ‘FLEXILACES’ 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.

Roxana PISLARU