Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 02/09/2019

Patendibüroo KÄOSAAR OÜ

Tähe 94

EE-50107 Tartu

ESTONIA

Application No:	016977324
Your reference:	K12193
Trade mark:	AUTO PARTNER 24
Mark type:	Figurative mark
Applicant:	F.S.I. Automotive OÜ Kopli 6-1 EE- Tallinn ESTONIA

I. The Office raised an objection on 07/05/2019 pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR because it found that the figurative mark applied for

is descriptive and devoid of distinctive character for the following goods and services applied for:

Class 7 Spare parts for motor vehicles and vehicle repair kits, namely exhaust gas catalytic converters; Hydraulic and pneumatic drives for machines and motors; Driveshaft; Driv shaft joints; Starter; Exhaust systems, namely exhaust manifolds, exhaust manifolds, silencers and their attachments; Fuel converter for internal combustion engines; Injectors for engines; Filters as part of machines or engines; Fuel pumps with self regulation for motor vehicles.

Class 9 Measuring devices, in particular air measuring devices.

Class 12 Spare parts for motor vehicles and vehicle repair kits, namely aerodynamic parts, axle cuffs, trailers, trailer couplings, car tires, drive shafts; Brakes, in particular brake shoes, brake calipers, brake discs, brake hoses, brake drums, brake parts, wheel brake cylinders, main brake cylinders; vehicle chassis and parts for vehicle chassis; transmission; hydraulic circuits, in particular brake hydraulic circuits; Suspension parts.

Class 35 Retail services relating to motor vehicle accessories; Online retail store services in relation to motor vehicle accessories.

for the reasons set out in the attached letter.

II. The applicant submitted its observations on 06/07/2019. They may be summarised as follows.

1. The applicant concedes that the word element AUTO PARTNER of its trademark may prove to be descriptive and/or non-distinctive in Classes 7, 9, 12 and 35. Nevertheless, the inclusion of additional distinctive figurative elements bestow it the necessary distinctiveness required for its registration.

2. The German Office and the EUIPO have previously registered comparable marks. As these marks been found registrable, so should the present figurative EU trademark.

III. 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.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

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.

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 (see judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31).

The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

As demonstrated in the objection letter, the sign as a whole can be understood by German-, English- and Dutch-speaking consumers as ‘business partner in the field of automobiles, available 24h per day/around the clock’ and therefore the relevant consumer would perceive the sign as providing information that the goods and services applied for in Classes 7, 9, 12 and 35 (i.e. automobile parts and accessories and/or goods that may be used in conjunction with automobiles and their parts, as well as retail services regarding such goods) are provided by a business partner in the field of automobiles and are available 24h per day/around the clock.

1. The applicant does not contest the Office’s findings regarding the word element AUTO PARTNER but states that the mark should be registered due to the inclusion of various additional elements in its trademark, including the colours blue and bright red in case of the word element and the blue and bright red arrows encircling the number 24, the latter being part blue and part bright red.

As regards the figurative aspects of the sign the Office reiterates that they are not sufficient to endow the trade mark as a whole with any distinctive character because blue and red are basic colours, the use of which is not uncommon in advertising to attract the consumers attention, therefore these colours and their combination are not likely to be associated by the relevant public with a specific commercial origin. Regarding the device of revolving arrows around the number ‘24’ it has to be held that these merely convey the message ‘24h per day/around the clock’ and will therefore merely be perceived as an indication of the availability of the goods and services in question, but not as indicating a specific commercial origin either.

Consequently, the figurative elements are not sufficient to draw the consumer’s attention away from the descriptive message of the sign, so the sign as a whole still falls foul under Article 7(1)(c) EUTMR.

As the sign as a whole constitutes a merely descriptive and promotional indication and lacks any further aspects that might be perceived by the consumer as indicating the commercial origin of the goods and services applied for, the sign also lacks the minimum level of distinctiveness to allow registration under Article 7(1)(b) EUTMR.

2. The applicant refers to a German figurative mark applied-for and registered in 2006 for vehicle spare parts in Classes 7, 9 and 12. The applicant further refers to an EU figurative trademark applied-for in 2001 and registered in 2003 for various vehicle spare parts and car workshop and inspection services in Classes 2, 4, 7, 9, 12, 16, 35, 37, 42.

As regards the national decision referred to by the applicant, 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).

Regarding the applicant’s references to a previous Office registration it has to be noted that the Office is not bound by its previous decisions and each case must be assessed on its own merits (judgment of 21/05/2014, T-553/12, BATEAUX MOUCHES, EU:T:2014:264, § 72-73).

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).

Furthermore, ‘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).

In any case the Office notes that the marks referred to by the applicant were applied for and registered a long time ago and differ in certain figurative aspects from the sign applied for. Therefore, no direct conclusions regarding the registrability of the mark applied for can be drawn from these registrations.

IV. For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 977 324 is hereby rejected for all the goods and services.

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.

Tobias KLEE