Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/10/2017

KURZ PFITZER WOLF & PARTNER RECHTSANWÄLTE mbB

Königstr. 40

D-70173 Stuttgart

ALEMANIA

Application No:	016927907
Your reference:	TM20743
Trade mark:	PRO TECH
Mark type:	Word mark
Applicant:	iFixit 1330 Monterey Street San Luis Obispo California 93401 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 04.07.2017 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, for the reasons set out in the attached letter.

The applicant submitted its observations on 05.09.2017, which may be summarised as follows.

• The sign PRO TECH has a variety of interpretations. Both PRO and TECH have a number of meanings. There is no meaning regarding the kind, quality or intended public of the goods in question. Moreover, hand tools are usually already not referred to as ‘technology’, since they are usually simple tools without ‘technology’. There is no clear description related to the goods in question. The sign as a whole is vague.

• The applicant notes that the Office has not shown evidence that the term ‘PRO TECH’ is used in the way the Office describes.

• Since the mark is not descriptive, it does not lack distinctiveness.

• The applicant makes reference to a similar case, “promed”.

• There are several marks registered in the EU member states.

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).

The Office notes the additional meanings and interpretations of the words “PRO” and “TECH” submitted by the applicant. However, 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 the present case, in the notification dated 04.07.2017, the Office has not used the meaning of “tech” in the sense of “technology”. The definitions given in the Office’s previous letter were the following: “PRO” - ‘short for professional’ - ‘If you say that something that someone produces is professional, you approve of it because you think that it is of a very high standard’; “TECH” - ‘abbreviation for technical - of, used in, or peculiar to a specific science, art, profession, craft, etc.; specialized’. The definitions given by the Office are directly linked to the goods applied for, namely, hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; hand tools for construction, repair and maintenance. The combination “PRO TECH” in relation to these goods informs consumers, without further reflection, that the tools in question are specialised tools for professionals and/or are of a high standard/quality “professional”. Consequently, there is no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as a grammatical analysis, before they would understand the meaning of the mark “PRO TECH” in relation to the goods. Moreover, even if the expression “PRO TECH” were grammatically or linguistically incorrect and could be considered novel, all the elements composing the mark would be understood by the relevant public. Since one of the possible meanings of the combination applied for is directly descriptive of the goods, the mark cannot be considered vague or allusive.

The Offices notes the applicant’s observation that no evidence has been given to show that the term “PRO TECH” is used in the way the Office describes. However, it should be noted 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.

In relation to the distinctiveness of the trademark, given that the sign has a clear descriptive meaning, as explained above, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of its competitors.

As regards the applicant’s argument that a similar registration has been accepted by the EUIPO (EUTMA 12885489  - promed), 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).

‘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).

As regards the national decisions referred to by the applicant (ProTech (France Reg. No. 4015036), PRO-TECH (WIPO Reg. No. 927418), PRO-TECH (UK Reg. No. UK00001201332), ProTech (Germany Reg. No. 302011046354)), according to case-law the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47). In addition references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

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 16927907 is hereby rejected 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.

Helen BIRCH