Refusal of application for a European Union trade mark

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

Alicante, 30/06/2017

WILSON GUNN

Charles House 148/9 Great Charles Street

Birmingham B3 3HT

REINO UNIDO

Application No:	016405524
Your reference:	T/62030.EM
Trade mark:	AIR CRADLE
Mark type:	Word mark
Applicant:	David E.T. Garman Concepts Limited Richard House, Winckley Square Preston PR13HP REINO UNIDO

The Office raised an objection on 02/03/2017 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 02/05/2017, which may be summarised as follows:

1. As the service of Oxford English Dictionary used by the Office for the definition of the word ‘CRADLE’ requires a subscription, it was not possible to confirm the information. The term ‘CRADLE’ has other, more commonly used meaning.

2. The relevant consumer, a professional public, will not be able to establish a direct relationship between the mark applied for, ‘AIR CRADLE’, and the goods in question. Moreover, the expression at issue does not have any meaning without further reflection and, as whole, does not immediately inform consumers without further reflection of any characteristics of the goods in question. The expression at hand is not entirely descriptive and therefore inherently distinctive.

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).

As regards the applicant's observations, the Office replies as follows:

As regards the applicant’s argument that, as the service of Oxford English Dictionary used by the Office for the definition of the word ‘CRADLE’ requires a subscription, it was not possible to confirm the information, and that the term itself has other, more commonly used meaning, the Office has noted applicant’s comments.

However, for the sake of simple corroboration of the source used as reference and its previous arguments, the Office includes below the corresponding screenshot of the entry in the Oxford English Dictionary:

The fact that the term has other or several meanings, the Office asserts 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, emphasis added.)

In its submissions the applicant further argues that the relevant consumer, a professional public, will not be able to establish a direct relationship between the mark applied for, ‘AIR CRADLE’, and the goods in question. Moreover, the expression at issue does not have any meaning without further reflection and, as whole, does not immediately inform consumers without further reflection of any characteristics of the goods in question. The expression at hand is not entirely descriptive and therefore inherently distinctive.

The Office has noted the applicant’s comments. However, it considers that the high level of attention alone does not establish that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a really striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of indications on goods or in relation to services they are confronted with and will perceive the expression ‘AIR CRADLE’ merely as a descriptor, indicating a characteristic of the goods applied for.

Moreover, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

It must be held 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 (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

With regard to applicant’s arguments that the expression as whole is not relevant to any characteristics of the goods in question, it must also be advised that ‘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).

In addition, the Office has to reiterate that 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 (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). This, as stated in the Office’s arguments above, is clearly applicable to the present case.

The sign is composed of two English words both of which are descriptive in relation to the specified goods and services claimed. ‘AIR’ informs the consumer that the goods at issue relate to the use or application of air, and ‘CRADLE’ indicates an appliance in which a person or thing can be swung or carried.

The applicant does not question the descriptiveness of the word ‘AIR’ and while admitting that the term ‘CRADLE’ may be generic in its other meaning, further argues that their juxtaposition is distinctive.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [CTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts … (see judgment of 12/01/2005, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, paragraph 32).

It follows that the Office respectfully disagrees with the applicants arguments and asserts that the expression ‘AIR CRADLE’ immediately informs consumers without further reflection about the kind and intended purpose of the goods in question, namely that they are devices and apparatus, which through the application of air as its integral part, are used for carrying persons or objects; more precisely, in the present case, for transporting and handling patients. The way in which the two words are juxtaposed follows the rules of English grammar and common parlance. The sign is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. The mark at issue conveys obvious and direct information regarding the character of the goods in question. The term ‘AIR CRADLE’ consists exclusively of a meaningful expression that will be easily understood by the relevant public, more so if we consider a professional consumer, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of the goods in question.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the expression ‘AIR CRADLE’ will be perceived by the consumers as pointing to the commercial origin of the goods applied for. For the reasons mentioned above, the sign at hand does not possess any actual distinctive character for the goods applied for, pursuant to Article 7(1)(b) and (c) EUTMR and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the goods of the applicant from those of other undertakings.

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 16 405 524 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.

Robert KLECUN