Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 28/02/2018

JEFFREY PARKER AND COMPANY

The Grange, Hinderclay

Suffolk IP22 1HX

REINO UNIDO

Application No:	017099516
Your reference:	TM7752
Trade mark:	I-CAR
Mark type:	Word mark
Applicant:	Inter-Industry Conference on Auto Collision Repair 5125 Trillium Blvd. Hoffman Estates Illinois 60192 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 31/08/2017 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 10/11/2017, which may be summarised as follows.

1. The Applicant submits that the Application Mark does not allow a consumer to conclude what the refused goods and services covered by the application might be. The mark when considered alone and without further information, does not allow any consumer to deduce or identify the kind or type of the refused goods and services. If a link does exist between the Application Mark and the refused goods and services, it is too remote and therefore allusive

2. It is further submitted that Both I and CAR have, according to the Collins English Dictionary (used by the Examiner in the Examination Report), several meanings. However, the word I-CAR itself is not descriptive of any of the refused goods or services per se.

3. The Applicant submits that the description of goods and services make it clear that the focus of the trademark is on vehicle collision repair, welding and damage analysis. It is not to do with cars themselves, but only the peripheral, or sometimes main, damage that may result in a collision. Cars are not the focus of the services

4. A relevant public with an observant and circumspect level of attention would perceive the Application Mark as a trade mark and a distinctive sign that can denote origin.

5. The Applicant submits that the Mark (i) has at least the minimum degree of distinctiveness to be registrable as a EUTM and (ii) is able to identify the goods and services as originating from a particular undertaking, i.e. the Applicant

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).

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 and as stated in the Office previous notification that the link between the words I CAR contained in the mark and the goods and services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) CTMR.

Finally, and as regards the arguments that the application has at least the minimum degree of distinctiveness to be registrable and that the relevant public would perceive the Application Mark as a trade mark .

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

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 17 099 516 is hereby rejected for all the goods and services 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.

Agueda MAS PASTOR