Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/01/2018

WILSON GUNN

5th Floor

Blackfriars House

The Parsonage

Manchester M3 2JA

REINO UNIDO

Application No:	017226713
Your reference:	T/65189.EM-ML/SA
Trade mark:	PAR PRO
Mark type:	Word mark
Applicant:	IP Holdings, LLC 3204 NW 38th Circle Vancouver Washington WA 98660 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 26/09/2017 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 27/11/2017, which may be summarised as follows.

1. The relevant public in the present case comprises the average consumer interested in the fields of agriculture, horticulture and hydroponics. As part of this interest, consumers would purchase goods including those listed in Class 11. Whilst the average consumer would be reasonably well-informed, observant and circumspect, they are not highly specialised professionals in the lighting field.

2. That PAR is allegedly an acronym for Parabolic Anodized Reflectors or refers to a type of lighting would not be recognised by consumers operating in the fields of agriculture, horticulture and hydroponics. Indeed, it is submitted that relevant consumers would in fact immediately perceive ‘PAR’ as a term used in the sport of golf or by its common meaning of ‘equality in value

3. To highlight the specialism of the meaning put forward by the Examiner relative to the word PAR, a Google search for “PARABOLIC ANODIZED REFLECTOR” returned 902 results, whereas a search for the word “PAR” returned 3,340,000,000 results.

4. The assessment must apply to the trade mark as a whole, namely, PAR PRO, and not to its individual elements.

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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

The applicant argues that the consumers are not highly specialised professionals in the lighting field. However, the Office is still of the opinion that in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high specialization of the sector, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

The applicant argues that the consumer would in fact immediately perceive ‘PAR’ as a term used in the sport of golf or by its common meaning of ‘equality in value. 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.)

The Office agrees with the applicant that PAR would be immediately perceived as a term used in the sport of golf when connected with sport related goods but not in connection with lights as it is in the case at hand.

Regarding the argument that a Google search for “PARABOLIC ANODIZED REFLECTOR” returned 902 results, whereas a search for the word “PAR” returned 3,340,000,000 results, the Office considers that tis shows exactly the spread of the use of the acronym.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

Finally, and 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). Besides, the mark is not a single word but a two word combination PAR PRO.

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 17 226 713   is hereby rejected.

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.

Examiner’s name

Agueda MAS PASTOR