Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 17/01/2018

MAUCHER JENKINS

26 Caxton Street

London SW1H 0RJ

REINO UNIDO

Application No:	017184904
Your reference:	T048182/EM/07/KAE/jt
Trade mark:	AUTO LOADING FEEDER
Mark type:	Word mark
Applicant:	Yamaha Hatsudoki Kabushiki Kaisha 2500 Shingai, Iwata-shi Shizuoka-ken 438-8501 JAPÓN

The Office raised an objection on 18/09/2017 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 15/11/2017, which may be summarised as follows.

• The link to the online Oxford Dictionary used to support the Office’s objections could not be opened by the EUTM applicant. The link to the online Collins Dictionary do not bring any evidence that ‘AUTO LOADING FEEDER’, as a whole, is descriptive in nature and devoid of any distinctive character in relation to all of the goods for which registration is sought. Since no document was attached to the relevant notification to support the Office’s claim in respect of ‘AUTOLOADING’, and no further arguments for a supposed descriptiveness for all goods applied for were stated, the Office erred in demonstrating that the relevant consumers in the Union would necessarily understand the meaning of ‘AUTO LOADING FEEDER’ as a descriptive non-distinctive term for all of the goods for which the registration is sought.

• The mark is the same as numerous other allusive marks that have been accepted as inherently distinctive and non-descriptive by the Office. The Applicant refers in particular to EUTMs accepted without evidence of acquired distinctiveness, such as No. 10 803 021 ‘DUO-FEEDER’, No. 813 709 ‘Starfeeder’, No. 1 272 319 ‘feederflex’, No. 1 622 943 ‘CIRCLE FEEDER’. The Office should be consistent and follow the principle of equal treatment and of sound administration.

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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

It is to be noted that is not necessary to prove that the sign is the subject of a dictionary entry in order to be refused protection. In fact, for composite terms dictionaries do not include all possible combinations of words. What matters is the ordinary and plain meaning of the term in question, for the relevant consumer. In its current practice the Office first explain the meaning/perception by the relevant public of the sign and only then provides dictionary references backing up such meaning, if need be (dictionary entries are not obligatory but optional). It suffices that the term is meant to be used, or could be understood by the average English-speaking consumer and specialised English-speaking consumer, as a description of the characteristics of the claimed goods. In the present case and as stated in the notification of 18/09/2017, the sign ‘AUTO LOADING FEEDER’ will be understood by relevant consumers without any analytical process as a device with an autoload facility that feeds the working material into a system or machine. The meaning of the aforementioned sign is clear to any English-speaking consumer (both average and specialised), who will immediately and without any difficulty establish a direct and specific link between this mark and the characteristics of the goods to which an objection has been raised.

Moreover, the applicant has applied for specific products that are related, among others to feeders, such as feeders for machines, radial feeders, feeders (parts of machines), electronic component feeders for electronic circuit board manufacturing machines; component feeders for semiconductor manufacturing machines; component feeders for surface mounting machines; parts and fittings of all the aforementioned goods. In the term ‘AUTO LOADING FEEDER’, there is no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as grammatical analysis, before they would understand the meaning of the mark in relation to the goods in question. Therefore, the trade mark is not considered an unusual combination of words. Consequently, the meaning conveyed is not vague or far-fetched but explicit, and the mark will not be perceived merely allusive by the relevant consumers.

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.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, such as EUTM No. 10 803 021 ‘DUO-FEEDER’, EUTM No. 813 709 ‘Starfeeder’, EUTM No. 1 272 319 ‘feederflex’, EUTM No. 1 622 943 ‘CIRCLE FEEDER’, 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; 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).

The Office has taken note of the previously accepted cases containing the word ‘feeder’. However, the Office points out that exists EUTM applications refused that had a similar structure to the sign applied for, for instance EUTMA No 12 705 984 ‘Puzzle Feeder’ and EUTMA 12 833 034 ‘TRAYFEEDER’. Therefore, it is clearly Office practice to refuse descriptive marks that have a structure similar to that of the sign applied for.

With regard to the principles of equal treatment and of sound administration, the Office must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the application of those principles must, however, be consistent with the principle of legality. Moreover, for reasons of legal certainty and, precisely, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such examination must therefore be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T-248/11, Pure Power, EU:T:2013:333, § 50).

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.

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 17 184 904 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.

Moises Paulo ROMERO CABRERA