Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/05/2018

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	017224809
Your reference:	TM404978EM-JAF/JXM
Trade mark:	FUELCELLENERGY
Mark type:	Figurative mark
Applicant:	FuelCell Energy, Inc. 3 Great Pasture Road Danbury Connecticut 06810 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/11/2017 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 02/03/2018, which may be summarised as follows.

1. The mark comprises not only the verbal element ‘fuelcellenergy‘, but also a figurative element. It is strongly disputed that the figurative element of the mark is ‘so negligible‘ that it does not bestow any distincitve character.

2. The applicant referred to EUTMs that are similar to the figurative element contained in the mark.

3. The figurative element cannot be unnoticed as it extends to double the height of the verbal element, and is half the width of mark. The verbal element of the applicant’s mark does not detract from the inherent distinctiveness of the figurative element.

4. The applicant referred to the composite EUTMs which contain a comparable figurative element together with a non-distinctive/descriptive verbal element in standard font.

5. The verbal element ‘fuelcellenergy’ appears as a single term and not as three separated words. It is not disputed that English-speaking consumer could still recognise that this single term is made up of the words ‘fuel cell energy’, it is nonetheless relevant to the assessment of the overall impression of the mark. When this is taken into account together with the distinctive figurative element, it is submitted that the combination of the elements renders the mark inherently distinctive as a whole.

6. The Office did not provide sufficient reasoning in relation to each of the goods and services. In this case it is not sufficient to provide reasoning in relation to a category of goods and then to justify the objection in relation to all of the services that they are ‘related services’ given the broad array of services.

7. When the actual use of the mark by the applicant is considered, it can easily be seen how the mark applied for functions as a distinctive trade mark.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

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.

‘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).

1. Regarding the applicant’s first argument, the Office claims that it examined the mark as a whole. The Office maintains its opinion that the mark conveys obvious and direct information about the kind, intended purpose and subject of the goods and services in question. Furthermore the Office maintains the opinion that the figurative elements consisting of a common font and three tapering lines which form a triangular shape are not original enough and the Office considers them so negligible that they are not able to endow the mark as a whole with distinctive character.

2. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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).

3. As regards the applicant’s third argument, the Office states that the mark has to be examined as a whole. Furthermore the Office reiterates its response to point 1.

4. As regards the applicant’s fourth argument, the Office reiterates its response to point 2. Furthermore the Office states that the trade mark law as well as the practice of the Office are constantly developing, therefore, the examples of marks that were registered 10 years ago cannot be considered relevant for this case.

5. As regards the applicant’s fifth argument, the Office states that a conjunction of three words into one unit does not change its perception by the relevant public. The applicant did not dispute this fact. The Furthermore, the Office reiterates its response to point 1.

6. As regards the applicant’s sixth argument, the Office disagrees. The Office stated, in its notice of 03/11/2017, that the mark conveys obvious and direct information about the kind of the goods in question (that they are fuel cells that are intended to create or store electrical energy and power plants using fuel cells). Furthermore, the Office maintains its opinion that the services for which registration is sought are closely related to fuel cells that are intended to create or store electrical energy and power plants using fuel cells. This is not only because of the meaning of the mark but also because of the specification of the services that are limited by the applicant himself that they are related to fuel cells or fuel cell power plants or they are such a broad categories that they can include services related to fuel cells or power plants using fuel cells. Therefore, the Office maintains its opinion that the mark when perceived by the relevant public in relation to the services applied for would be perceived merely as information about the intended purpose of the services.

7. As regards the applicant’s final argument, the Office states that the descriptiveness and distinctive character of the mark must be assessed in relation to the goods and services for which registration is sought and in relation to the perception of the relevant public. The actual use of the mark by the applicant is irrelevant.

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 17 224 809 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.

Klara BOUSKOVA