Refusal of application for a European Union trade mark

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

Alicante, 09/06/2017

PHILLIPS & LEIGH

5 Pemberton Row

London EC4A 3BA

REINO UNIDO

Application No:	016426603
Your reference:	T100005
Trade mark:	RESIN GUARD TECHNOLOGY
Mark type:	Word mark
Applicant:	Wilsonart LLC 13413 Galleria Circle #200 Austin, Texas 78738 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 13/03/2017, 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.

2. The applicant submitted its observations on 10/05/2017, which may be summarised as follows:

• The relevant public is not only professional consumers in the decoration and construction fields, but also the general public doing “DIY” decoration or construction.

• Decoration and construction are not noted as being highly technical fields and the average consumer will therefore not analyse the mark linguistically.

• The mark RESIN GUARD TECHNOLOGY as a whole is ambiguous and has many meanings, and the syntax of the mark is unusual.

• The goods are not sprays and coatings as the examiner indicates. As for the goods “cladding” there is no direct and specific association between those goods and individual words in the mark.

• The mark is not a phrase that would be likely to be adopted by anyone seeking to describe the goods or their characteristics. Reference is also made to the decision of the Board of Appeal in case R 1645/2016-4, HOME GUARD.

3. 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).

The Office cannot find other than that the mark is descriptive and devoid of any distinctive character in relation to the goods at issue.

The examiner agrees that the relevant public are professionals in the field of decoration and construction, and average consumers doing DIY in these fields.

The goods at issue are “plastic laminates in the form of sheets, plates and panels for use as surface material” in class 17, and “non-metal cladding for construction and building” in class 19.

The examiner erroneously referred to “the technology of resin-based sprays and coatings”, but meant that the goods may be resin coated.

In any case, both the plastic laminates in class 17, and the claddings in class 17 contain resins. See the following web sites:

https://www.slideshare.net/Sonaliparashar/laminated-plastics-53788872

2. WHAT IS PLASTIC LAMINATE? Ø These are actually made of several layer of kraft’s paper bonded together with plastic resin under the heat and very high pressure.

Also “non-metal cladding” may contain resins:

http://www.relinea.com/composite-cladding

…GRP composite cladding panels are manufactured by combining hundreds of thousands of glass strands with pigmented thermoset UV resins, to produce an immensely strong and durable panel whilst maintaining an attractive appearance, and can be produced to incorporate the following features:

The mark “RESIN GUARD TECHNOLOGY” therefore simply indicates that the goods applied for incorporate and feature a resin-based technology that makes the products resistant and protects them from damage, such as surface damage.

All the words in the mark RESIN GUARD TECHNOLOGY are common English words known to both professional users and average consumers. Even if the average consumers may previously not know that resins form part of the goods, when viewing the mark together with the goods, it will immediately be obvious to them that the goods contain resin in one form or other.

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free.

As regards the applicant’s reference to the decision of the Board of Appeal in case R 1645/2016-4, HOME GUARD, that mark is very different from the mark “RESIN GUARD TECHNOLOGY”.

Moreover, the Board of Appeal has refused a number of marks containing the word GUARD. See for instance the decision of 28/09/2007, R 1361/2006-4, ADDRESSGUARD, for goods and services in classes 35, 38 and 42, and the decision of 3/11/2008, R 933/2008-4, GREASE GUARD, for goods in classes 1, 16, and 20.

4. 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 16 426 603 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.

Anne-Lee KRISTENSEN

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