Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/01/2018

KURZ PFITZER WOLF & PARTNER RECHTSANWÄLTE mbB

Königstr. 40

D-70173 Stuttgart

ALEMANIA

Application No:	016927816
Your reference:	TM20745
Trade mark:	JIMMY
Mark type:	Word mark
Applicant:	iFixit 1330 Monterey Street San Luis Obispo California 93401 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 05/07/2017 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character.

The sign applied for consists of the word mark “JIMMY” and the goods claimed were:

Class 8 Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Hand tools for construction, repair and maintenance.

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In order to overcome the objection raised under Article 7(1)(b) and (c) and Article 7(2) EUTMR and as the word “JIMMY” is a common name for crowbars, the applicant presented the following limitation in class 8 relating to crowbars on 10/07/2017:

Class 8 Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance, except crowbars; Hand tools for construction, repair and maintenance, except crowbars.

The Office refused this limitation on 08/08/2017 because amending the list of Class 8 goods as proposed will result in the application being open to objection under Article 7(1)(g) and 7(2) due to its deceptiveness relating to the nature of the goods, for the reasons set out in the L110 attached letter.

On 09/10/2017, the applicant requested a two months extension to reply to the L110 objection letter dated 08/08/2017 which was granted on 10/10/2017 with an expiry date of 13/12/2017.

The applicant submitted its observations on 13/12/2017, which may be summarised as follows:

1. The argument of the Office is not coherent. If crowbars are excluded from the list of goods claimed, then the trade mark is not deceptive for the remaining goods. If the trade mark is only deceptive for part of the goods claimed for a broad category of goods, then the mark is not deceptive for this broad category.

2. According to case-law, the average consumer is not regarded as easily vulnerable to deception. The claimed goods are hand tools which will not be mistaken for crowbars

3. The sign “JIMMY” has different meanings. If it is applied for other products than crowbars, the general public will relate the mark to its other meanings.

4. As the average consumer will not see the mark “APPLE” related to computers as deceptive, nobody will mistake screwdrivers or scissors for a crowbar.

5. The limitation of the goods does not clearly and objectively contradict the defined goods as it completely excludes the goods that might be described by the mark. The mark is not deceptive for other hand tools than crowbars as it does not describe any of its characteristics.

6. According to EUIPO guidelines, if a non deceptive use of the sign is possible, the sign should not be rejected, an objection will only be raised if there is a sufficiently serious risk that the consumer will be deceived. No objection is to be raised when the list of goods and services is worded in such a broad way that a non deceptive use is possible. The mark is not deceptive for hand tools that are not crowbars and, as a result, should be accepted for registration.

Pursuant to Article 94 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).

1. The applicant indicates that the argument of the Office is not coherent, as if crowbars are excluded from the list of goods claimed, then the trade mark is not deceptive for the remaining goods and that, if the trade mark is only deceptive for part of the goods claimed for a broad category of goods, then the mark is not deceptive for this broad category. But, under Article 7(1)(g) EUTMR, ‘trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service’ are not to be registered. The average consumer will create a mental link between the mark “JIMMY” and the product “crowbars” and will expect the mark to cover a product which has, in fact, been excluded from the list of goods of the mark. The relevant public will discover that the mark is not used by the applicant to sell this product. The proposed limitation would, thus, deceive the public as to the nature of the goods claimed.

2. The applicant states that, according to case-law, the average consumer is not regarded as easily vulnerable to deception and that the claimed goods are hand tools which will not be mistaken for crowbars. However, in order to determine whether the description, trade mark or promotional description or statement in question was liable to mislead the purchaser, the Court took into account the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect, (16/07/98, C-210/96 “Gut Springenheide” § 31 and 13/01/00 C- 220/98 “ Lifting”). In view of the mark “JIMMY”, the average consumer will expect to be able to buy crowbars and as the applicant has specifically excluded crowbars from the list of goods claimed, the mark misleads the average consumer as regards the nature of the products sold and covered by the sign.

3. The applicant underlines the fact that the sign “JIMMY” has different meanings and that, if it is applied for other products than crowbars, the general public will relate the mark to its other meanings. Yet, 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.). The relevant consumer will immediately understand that the trade mark applied for gives information relating to the kind of products claimed, namely that they are crowbars.

4. The applicant highlights that, as the average consumer will not see the mark “APPLE” related to computers as deceptive, nobody will mistake screwdrivers or scissors for a crowbar. But, Article 7(1)(g) of Regulation No 40/94 implies a sufficiently specific designation of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics which they do not in fact possess will he be deceived by the trade mark. (24/09/08 T-248/05 « I.T.@Manpower » § 65). As the trade mark applied for describes the kind of products claimed, if these products are not included in the mark list of products, the relevant consumer will be deceived as to the nature of the products claimed and thus misled by the mark applied for.

5. The applicant strengthens the fact that the limitation of the goods does not clearly and objectively contradict the defined goods as it completely excludes the goods that might be described by the mark, that the mark is not deceptive for other hand tools than crowbars as it does not describe any of its characteristics. However, according to case-law, Article 7(1)(g) EUTMR presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (04/03/1999, C-87/97 “Consorzio per la tutela del formaggio Gorgonzola”, § 41). The relevant consumer will immediately establish the mental link between the mark and crowbars and will thus be deceived by the mark when seeking to buy products which in fact are not covered by the mark applied for. The relevant public will be deceived as regards the nature of the products sold.

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6. The applicant concludes that, according to EUIPO guidelines, if a non deceptive use of the sign is possible, the sign should not be rejected, an objection will only be raised if there is a sufficiently serious risk that the consumer will be deceived, that, no objection is to be raised when the list of goods and services is worded in such a broad way that a non deceptive use is possible and that the mark is not deceptive for hand tools that are not crowbars and, as a result, should be accepted for registration. However, a mere theoretical possibility that the public maybe mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR (17/04/2007, R 1102/2005-4, “SMARTSAUNA”, § 32), but taking into account the mark applied for, the relevant public will be easily deceived as regards the nature of the goods applied for by the limitation proposed, so it will represent a serious risk for the relevant consumer and cannot therefore be accepted. Moreover, in view of its descriptiveness of the kind of the products applied for, the mark is also non distinctive for the goods claimed as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods of one undertaking from those of its competitors.

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 016927816 is hereby rejected in its entirety, for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Brigitte BERNHEIM

Annex: L110 letter dated 08/08/2017