Refusal of application for a European Union trade mark

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

Alicante, 15/06/2017

GROSSE SCHUMACHER KNAUER VON HIRSCHHAUSEN

Frühlingstr. 43A

D-45133 Essen

ALEMANIA

Application No:	016358822
Your reference:	M1170020EM
Trade mark:	PERFECT FLAME
Mark type:	Figurative mark
Applicant:	Lincoln Global, Inc. 9160 Norwalk Santa Fe Springs, California 90670 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/02/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 27/04/2017, which may be summarised as follows:

1. Similar marks have been accepted previously by the EUIPO and the German National Office. Case-law states that the Office should consider earlier registrations as evidence of practice that indicate the evaluation scale to take into account.

2. The applicant’s sign is a complex, compound sign which possesses distinctive character. It serves to distinguish the goods from a particular trader. The relevant public will perceive this sign as a trade mark.

3. The word combination ‘PERFECT FLAME’ is a special combination, not used in trade in relation to the goods for which an objection has been raised.

4. The sign does not have any clear meaning in relation to the goods. It is evocative and not merely a descriptive message in relation to the goods. The sign lacks the direct and obvious meaning in relation to the goods that is necessary according to case-law in order to reach a conclusion on lack of distinctiveness.

5. The goods in class 7, “electric welding machines, electric brazing machines, electric soldering machines”, cannot be directly described or characterized by the words ‘PERFECT FLAME’ since these goods do not have this attribute (a flame). The welding, brazing and soldering processes are only distantly related to the word ‘FLAME’.

6. The goods in class 9, “electronic brazing torch controller, namely, hardware and software that controls mixing of gas used in brazing operation; devices and equipment for the before said goods” are also not characterized by the words ‘PERFECT FLAME’, or at least, not directly. There is no sufficient connection between these goods and the sign for any conclusion that the sign is devoid of distinctive character.

7. Figuratively, the sign has an evocative figurative element which gives it distinctive character. Also, the verbal elements are written in two different typestyles. The overall impression of the sign is that of a distinctive sign able to function as a trade mark.

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, and taking into account the amendment to the list of goods and serviced that took place in response to a deficiency regarding the classification of the goods and services, the Office has decided to maintain the objection for the following goods:

Class 7 Electric welding machines; electric brazing machines; electric soldering machines.

Class 9 electronic brazing torch controller, namely, hardware and software that controls mixing of gas used in brazing operation.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

1. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO and by the German National Office, 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).

As to the case-law stated by the application;

‘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).

2. The applicant’s sign contains verbal and figurative elements that need to be assessed not individually but as a whole in the examination process. A compound sign does not per se possess distinctive character but this will depend on the overall impression it gives in relation to the goods or services. The sign at stake in this particular case is a compound mark that lacks inherent distinctive character. The verbal elements consist of a laudatory message in relation to the goods to which the objection was raised. The functionalities for which these goods are used need heat in order to work (soldering, brazing and welding). The heat source could be a flame and the word ‘FLAME’ is one part of the verbal element of the sign. The other part, ‘PERFECT’, is a non-distinctive laudatory term since it only indicates the quality level of whatever it refers to as being ultimate and impossible to improve. The figurative element shows a flame within a square with rounded corner. This element merely illustrates the meaning of the word ‘FLAME’ and does not add anything that could be perceived as distinctive and particular in the sign. When seeing this sign for the first time in relation to the goods for which the objection has been raised, the relevant consumer would not see in it a distinctive trade mark but only a promotional message that relate to the goods in question. The sign does not serve to distinguish the applicant’s goods from those of other undertakings on the relevant market. It is devoid of distinctive character and must be refused following Article 7(1)(b) EUTMR.

3. Whether or not a word combination is in fact used in relation to the goods in question is not relevant when determining the distinctive character of a sign:

‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Additionally, the message conveyed by the words ‘PERFECT FLAME’ is laudatory since it indicates the high quality of the flame that is used for welding, brazing and soldering. This informs the consumer that the heat source used for the particular process is a flame in perfect conditions for the specific task in the sense that it is the perfect temperature and the perfect size of the flame in order for the brazing, welding and soldering to be best performed. The sign consists only of a promotional message that is clear, direct and cannot be mistaken, in relation to the goods in question.

4. In the case at issue and as has been explained above, the relevant public would not perceive in the sign a particular trade origin but would merely perceive a laudatory promotional message with connotations closely related to the goods. As explained in paragraph 2) above, the word ‘FLAME’ is directly related to these goods. In combination with the laudatory non-distinctive term ‘PERFECT’, the relevant public will only perceive the promotional message of the sign. The figurative element reinforces this message and provides nothing additional to the distinctive character of the sign. It is therefore not only evocative but has a meaning in relation to the goods. It follows that the sign is devoid of distinctive character and does not serve in trade to distinguish the applicant’s goods from those of other commercial origin.

5. The goods cannot be directly described by the sign, else an objection under Article 7(1)(c) would have been raised. However, and as explained above, the weldering, brazing and soldering processes make use of a heat source which is closely related to a flame and that is likely to be illustrated by a flame. The meaning is therefore sufficiently closely related in order for the sign to lack distinctive character and not be perceived as a trade mark in relation to the goods.

6. Also for the goods in class 9 a flame or a ‘PERFECT FLAME’ has a meaning since the hardware and software control the mixing of gas used in brazing operations. In order for brazing to occur, the metal has to be melted through the use of heat and the melting point is at a high temperature which could be produced by a flame. The connection between the goods and the sign is sufficient for the sign to be devoid of distinctive character.

7. The sign is figurative but the most prominent part of it are the verbal elements ‘PERFECT FLAME’. As explained before, the figurative element, a flame, only reflects the meaning of the words and does not add any distinctive character to the sign. The fact that one word is written in bold italic typestyle and the other in regular style is not enough to make the sign distinctive. These features are minimal in nature and cannot be seen as particularly different or rememberable in the sign at hand. The overall impression of the sign is not that of a distinctive trade mark and the relevant consumers would not perceive the sign as an identifier of a particular trade origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 358 822

is hereby rejected for the following goods:

Class 7 Electric welding machines; electric brazing machines; electric soldering machines.

Class 9 Class 9 electronic brazing torch controller, namely, hardware and software that controls mixing of gas used in brazing operation.

.

The application may proceed for the remaining goods and services:

Class 7 Electric cutting machines.

Class 9 Scientific, photographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment; computers; computer hardware; computer software; parts, fittings and accessories for the before said goods.

Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware; design and development of computer software.

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.

Elna ISAKSSON