Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 24/05/2018

Fuchs Patentanwälte Partnerschaft mbB

Westhafenplatz 1

D-60327 Frankfurt am Main

ALEMANIA

Application No:	017083908
Your reference:	GT0017M-EU
Trade mark:	Tilt-360
Mark type:	Word mark
Applicant:	Trinity Bay Equipment Holdings, LLC 1201 Louisiana Street, Suite 2700 Houston Texas 77002 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/08/2017 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 26/01/2018, which may be summarised as follows:

1. The sign has no meaning. The combination of elements creates an impression that is sufficiently far removed from that produced by the sum of its parts. The sign is fanciful and would be easily and instantly memorised by the relevant public.

2. The sign is not descriptive, as a trailer cannot be tilted 360 degrees. The consumer will remember the unexpected combination and definitely associate it with the applicant’s undertaking.

3. ‘Tilt-360’ is an expression that need not be kept free for other traders to use, as none of the applicant’s goods would be able to tilt 360 degrees.

4. The objection under Article 7(1)(b) EUTMR relies on the objection under Article 7(1)(c) EUTMR. As the objection under Article 7(1)(c) EUTMR was made in error and should be waived, the objection under Article 7(1)(b) EUTMR should also be waived.

5. The applicant’s trade mark has been registered by the USPTO.

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 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 sign applied for immediately informs consumers, without further reflection, that the goods for which registration is sought are various types of trailers with an ability to tilt 360 degrees.

Therefore, the relevant consumers would perceive the sign as providing information about the nature and quality of the goods in question.

Given that the sign has a clear descriptive meaning, 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 observations, the Office replies as follows:

1. The sign has no meaning. The combination of elements creates an impression that is sufficiently far removed from that produced by the sum of its parts. The sign is fanciful and would be easily and instantly memorised by the relevant public.

The Office disagrees with the applicant; there is nothing unusual about the word ‘Tilt’ and the number ‘360’ or their combination that might lead to the assumption that these elements would not be used separately or together in everyday parlance. Contrary to the applicant’s argument, the Office, on the basis of the results of its examination, can attribute only a descriptive meaning to the sign applied for. As established in the course of the examination, there is no perceptible difference between the expression ‘Tilt-360’ and the mere sum of the elements ‘Tilt’ and ‘360’. The combination is not imaginative or surprising. The overall impression conveyed by the mark is not different from the mere combination of the individual meanings of each of the elements composing it. Furthermore, the relevant public will not memorise the sign easily and instantly as a distinctive trade mark for the goods in question. The mark is descriptive of the goods for which registration is sought and, consequently, lacks any distinctive character. The relevant public will perceive this combination as informational and descriptive rather than as a memorable and distinctive trade mark.

2. The sign is not descriptive, as a trailer cannot be tilted 360 degrees. The consumer will remember the unexpected combination and definitely associate it with the applicant’s undertaking.

The Office has to analyse the sign as a whole and decide how the words it consists of will be understood in this overall context. In the present case, it is considered that the mark as a whole indicates that the trailers in question can tilt 360 degrees. All the goods for which registration is sought are either various kinds of trailers or equipment for trailers. The average English-speaking consumer in the EU will understand the expression ‘Tilt-360’ in the context of the goods in question with the meaning given by the Office. All the goods for which registration is sought either are or may contain pipe trailers that can, for pipe-dispensing purposes, rotate or tilt 360 degrees; therefore, the sign is directly descriptive of all the goods in question.

3. ‘Tilt-360’ is an expression that need not be kept free for other traders to use, as none of the applicant’s goods would be able to tilt 360 degrees.

As stated above, all the goods for which the registration is sought are or contain pipe trailers that may have, for pipe-dispensing purposes, the ability to tilt or rotate 360 degrees. A simple internet search reveals that there are numerous entrepreneurs producing trailers that have the ability to rotate 360 degrees, for example https://www.vpgroundforce.com/gb/utility-equipment/products/pipe-handling/hypower-coil-pipe-trailer/; https://towmate.co.uk/product-category/trailers/pipe-trailers/; http://www.plcsusa.com/pe-pipe-coil-pipe-trailer.html

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 services 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 (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 39). Even if other traders do not currently use the same combination, this does not change the fact that the sign as a whole directly describes the nature of the services for which registration is sought. It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR 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 services. It is sufficient, as the wording of that provisions itself indicates, that such signs and indications could be used for such purposes.

4. The objection under Article 7(1)(b) EUTMR relies on the objection under Article 7(1)(c) EUTMR. As the objection under Article 7(1)(c) EUTMR was made in error and should be waived, the objection under Article 7(1)(b) EUTMR should also be waived.

The Office agrees with the applicant that, if the objection under Article 7(1)(c) EUTMR were waived, there would be no ground for the objection under Article 7(1)(b) EUTMR. However, the Office has not decided to waive the objection under Article 7(1)(c) EUTMR and, therefore, finds this argument irrelevant.

5. The applicant’s trade mark has been registered by the USPTO.

As regards the national decisions 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).

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 17 083 908 is hereby rejected for the following goods:

Class 12 Trailers, equipment trailers, coil trailers, coil tubing trailers, pipe trailers, flexible pipe trailers, flexible steel pipe trailers, and flexible composite pipe trailers.

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.

Liina PUU