Refusal of application for a European Union trade mark

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

Alicante, 22/09/2017

Koen Vangorp

Ven 19

B-2250 Olen

BÉLGICA

Application No:	016527624
Your reference:	CoolBrick
Trade mark:	CoolBrick
Mark type:	Word mark
Applicant:	Koen Vangorp Ven 19 B-2250 Olen BÉLGICA

The Office raised a partial objection on 03/04/2017 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 some of the goods for which protection is sought, for the reasons set out in the attached letter.

The applicant submitted its observations on 10/04/2017, which may be summarised as follows:

1. The applicant understood the Office’s conclusion and did not contest the objection. However, the applicant requested that the mark be registered as a design related to LED lighting fixtures. The Office responded to this request in its letter of 12/04/2017 saying that the registration of a design is a different procedure from that for trade marks and trade mark examiners are not able to provide any information on the outcome of that examination procedure.

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.

In view of the fact that the applicant did not provide any arguments on the substance, the Office has decided to maintain the objection, namely for the following goods:

Class 9 Heat sinks.

Class 11 Heat sinks for use in cooling apparatus.

Article 7(1)(c) EUTMR – general remarks

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 the present case, the trade mark applied for is the sign ‘CoolBrick’, which means ‘a moderately cold rectangular block’. Although this combination of words is not found as such in dictionaries, its meaning can be easily understood or deduced by the relevant English-speaking part of the public, as it is composed of the words ‘Cool’ and ‘Brick’. The first word means ‘moderately cold; comfortably free of heat; coolness; to make or become cooler’ (information extracted from Collins English Dictionary on 03/04/2017 at www.collinsdictionary.com). The second word means ‘a rectangular block of clay mixed with sand and fired in a kiln or baked by the sun, used in building construction; any rectangular block; bricks collectively’ (information extracted from Collins English Dictionary on 03/04/2017 at www.collinsdictionary.com). The relevant consumer will perceive it not as an unusual expression but, rather, as a meaningful one.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive must be left free for trade use. Descriptive indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as an unusual expression but, rather, as a meaningful one. The mark conveys the idea that the goods for which registration is sought, namely heat sinks, heat sinks for use in cooling apparatus, are heat sinks in the shape of a brick. The mark describes, in an unambiguous way, the characteristics of the goods by giving consumers relevant information as regards the nature of the goods offered.

The goods for which registration is sought target the average consumer and the professional public. It is clear that the relevant consumer will understand, in relation to the contested goods, the words, or the combination of words, as a meaningful expression referring to a heat exchanger that transfers the heat generated by an electronic or a mechanical device to a fluid medium, often air or a liquid coolant, where it is dissipated away from the device, thereby allowing the device’s temperature to be maintained at an optimal level.

The mark applied for, ‘CoolBrick’, clearly conveys obvious and direct information about the contested goods, which are heat sinks, heat sinks for use in cooling apparatus, namely about their nature. Although the combination as such might be novel, the words that make up the mark applied for are very common; the expression ‘CoolBrick’ is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. The combination of the two words does not contain, in relation to the separate components, any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin distinguishing the applicant’s goods from those of its competitors.

Article 7(1)(b) EUTMR – general remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

It is settled case-law that ‘a sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘CoolBrick’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods are heat sinks in the shape of a brick.

The mark is composed of the expression ‘CoolBrick’ written in normal letters. The goods to which an objection has been raised and which are covered by the mark applied for are heat sinks, heat sinks for use in cooling apparatus, which are specialised goods that target the average consumer and the professional public. In view of the nature of the goods in question, the degree of awareness of the relevant public will be high.

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 (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish the said goods from others that have a different origin. 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 English-speaking part of the public and other consumers in the EU who understand basic English words will see the mark not as a badge of a particular trade origin for the goods at issue but, rather, as a descriptive expression with an obvious meaning.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which protection is sought will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and 7(2) EUTMR, the application for European Union trade mark No 16 527 624 is hereby rejected for the following goods:

Class 9 Heat sinks.

Class 11 Heat sinks for use in cooling apparatus.

The application may proceed for the remaining goods.

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.

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