Refusal of application for a European Union trade mark

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

Alicante, 07/04/2017

FINNEGAN EUROPE LLP

16 Old Bailey

London EC4M 7EG

REINO UNIDO

Application No:	016158412
Your reference:	07490.0365-00337
Trade mark:	SAIC
Mark type:	Figurative mark
Applicant:	Science Applications International Corporation 1710 SAIC Drive McLean, Virginia 22102 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/12/2016 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 20/02/2017, which may be summarised as follows:

1. The relevant consumer will not perceive the mark as a type of boat, as claimed by the Office, but as an abbreviation pronounced one letter at a time.

2. Several marks consisting of the verbal element ‘SAIC’ are already registered; these are cited along with excerpts from a website showing use of the trade mark. This evidence proves the consumer’s perception of the sign as a distinctive trade mark and not as a generic indication of a type of boat.

3. The word ‘SAIC’ appears to be archaic, as confirmed by the graph in the Collins Dictionary; therefore, it is highly unlikely that it will be perceived as an English word. In addition, the Collins Dictionary is the only proof provided; the word does not exist in the Oxford, Cambridge or Merriam-Webster dictionaries or in the Encyclopaedia Britannica. Furthermore, a Google search shows results for the trade mark, but no indication of the generic name for a type of boat.

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).

In response to the applicant’s submissions, the Office states the following:

1.

The Office does not contest the idea that the mark is an abbreviation with no relation to the type of boat ‘saic’; however, it disagrees regarding how this combination of letters will be perceived by the relevant consumer, and maintains that in relation to the services in question, the sign may designate a type of boat. 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.)

Therefore, the Office also maintains that taken as a whole, the sign immediately informs consumers without further reflection that the services for which registration is sought are the manufacturing of saic boats. Consequently, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the type of products manufactured through the rendering of the service in question. It follows that the link between the word ‘SAIC’ and the services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR.

As the Office maintains that the mark is descriptive, it also maintains that the sign in question is not capable of distinguishing the services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant services and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the services for which registration is sought.

2.

As regards the applicant’s argument that a number of similar registrations have been accepted by EUIPO, only one of these is registered for services in Class 40, namely EUTM No 7 414 964 ‘SAIC’, for the following services:

Decontamination of hazardous materials; destruction of waste and trash; incineration of waste and trash; environmental remediation services, namely, soil, waste, and/or water treatment; hazardous waste management services, namely, reclamation, recycling, treatment, and disposal services; establishment and/or operation of waste management and/or recycling systems to include waste collection, reuse assessments, inventory, destruction, inventory transfer, and/or disposal after compliance; waste site management and remediation services.

The mark at issue is objected to for only the following services in Class 40: custom manufacturing services for others; manufacturing of vehicles for others, including military and defense vehicles. Therefore, the Office disagrees that the cited marks are relevant to the present objection, as the services are different.

Furthermore, 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).

In relation to the applicant’s arguments about the use of the mark in question, the Office does not dispute that it has been widely used in trade, as demonstrated by the internet excerpts submitted by the applicant. However, this does not mean that the mark is distinctive or not descriptive for the services in question, as constant use in the market does not endow a descriptive mark with sufficient distinctive character for it to be registered unless that use is sufficiently significant to ensure that the mark becomes well known by the relevant public, and, consequently, acquires distinctive character for the goods and services in question; in such a case, the applicant needs, first, to claim acquired distinctiveness within the meaning of Article 7(3) EUTMR and, second, to submit sufficient evidence to demonstrate that a significant proportion of the relevant public perceives the mark as identifying the relevant goods as originating from a specific undertaking. Therefore, the question of whether the mark has been used or not is irrelevant, because use does not necessarily mean that it has acquired distinctiveness, nor does it mean that the mark itself is not descriptive and/or distinctive.

3.
Similar definitions to the one used by the Office in the L110 objection letter, from the Collins Dictionary, can be found in several other dictionaries, for example:

(https://www.merriam-webster.com/dictionary/saic , accessed 31/03/2017)

(http://www.oed.com/view/Entry/169799?redirectedFrom=saic#eid , accessed 31/03/2017)

(http://www.onelook.com/?other=web1913&w=Saic , accessed 31/03/2017)

The Office agrees that word ‘saic’ appears to be old-fashioned. Nevertheless, this does not prevent it from being understood by the relevant consumer, and in fact, it is highly likely that that consumers seeking boat manufacturing services would have extensive knowledge about boat types, for example saics. The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 158 412 is hereby rejected for the following services:

Class 40 Custom manufacturing services for others; manufacturing of vehicles for others, including military and defense vehicles.

The application may proceed for the remaining goods and services.

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.

Lars Paalgard SOYLAND