Total refusal of an application for a EU trade mark under Articles 7 and 42 of the European Union Trade Mark Regulation (EUTMR) no. 2017/1001

Alicante, 20/06/2018

HGF Limited

140 London Wall, 8th Floor

London EC2Y 5DN

United Kingdom

Application No	17249624
Your reference	T248390EP
Trade mark	SAFELINK
Applicant	Fire Research Corp. 25 Southern Boulevard Nesconset, New York 11767 USA

• Procedure

The Office raised an objection on 13 November 2017, pursuant to articles 7(1)(b), (c) and 7(2) EUTMR, because it was found that this sign is descriptive of certain characteristics of the goods, as well as devoid of any distinctive character for the reasons set out in the attached letter.

On 13 December 2017 the applicant replied with the following counter-arguments:

1. There is no descriptive link between the words and the goods.

2. The examiner made wrong assumptions: There is no safe code involved.

3. SAFELINK is used as a proper noun.

4. The words are totally vague.

5. The Office unjustly splits up the sign into “safe” and “link”.

6. Similar signs were accepted in EUIPO.

7. Seeing the sign the relevant consumers are left in the dark about the nature of the goods.

• Decision

Pursuant to article 94 EUTMR, it is up to the Office to make a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due and careful consideration to the applicant’s arguments, the Office has decided to maintain the objection and refuse the application for all goods:

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Firefighting equipment and related components; electrical and electronically-controlled equipment on a fire truck and a fire engine; computer-controlled firefighting equipment and related components.

• Refutal of counterarguments

The Office comments on this refusal and the applicant’s arguments hereunder:

1. There is no descriptive link between the words and the goods.

The applicant is mistaken. SAFELINK has a very clear meaning in English (“a safe link” in the sense of a secure connection) and describes the way in which the goods function. The applicant itself puts it like this:

“Elkhart Brass simplifies operations by integrating pump, valve and monitor control into a single intuitive touchscreen with SafeLink, the most advanced apparatus control technology. Developed in partnership with engine governor experts FRC, SafeLink allows operators to easily manage all components in one central location so firefighters can focus on directing water flow where they need it, keeping everyone safe.”

The goods are high-tech control apparatus, touchscreens that work with safe links, or that provide safe links between all the components of the fire fighting systems. Safe can be interpreted in more than one way (e.g. safe in the sense of protected against hackers, or safe in the sense of remaining unharmed), but since both definitions are equally descriptive, this does not add anything fanciful to the sign, moreover since a sign must already be refused, if it describes characteristics of the goods in only one meaning.¹

When a sign describes an overall result (the goods provide safe links) or the circumstances under which the goods function (the touchscreens work with safe links), it cannot be registered based on article 7(1)(c) EUTMR:

(not to be registered are) “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 services”.

2. The examiner made wrong assumptions: There is no safe code involved.

The examiner does not need to make assumptions, wrong or right. He/she only needs to examine the application based on all relevant factors of the file, including dictionary definitions of the sign. The examiner cannot be expected to be an expert in all fields with a profound knowledge of everything.

The relevant consumer in this case is an English-speaking man or woman who is versed in fire-fighting and has profound knowledge of fire-fighting systems. This person will certainly understand what is meant with safe links in relation to high-tech control apparatus in fire-fighting trucks and engines.

3. SAFELINK is used as a proper noun.

This sounds peculiar, since “safe” here is an adjective and not a noun.

4. The words are totally vague.

5. The Office unjustly splits up the sign into “safe” and “link”.

The words have general meanings, which is not the same as totally vague. There are safe links/secure connections involved in the operation of the high-tech fire-fighting control apparatus, but the clients of applicant’s goods are not informed in detail about the nature or the purpose of these safe links. Nor do they need to, because nowhere in the Regulation can be found that only very detailed descriptive notions are to be refused.

As to the splitting up of the concocted word SAFELINK into “safe link”: What else would the relevant consumer read? He knows “safe”, he knows “link” and the combination makes sense.

6. Similar signs were accepted in EUIPO.

The Office is not bound by decisions made by national trade mark authorities or even by its own decisions made in the past in similar or identical cases.

Each case has to be judged on its own merits, taking into consideration the valid trade mark regulation and its interpretation by the Boards of Appeal of the Office and the Courts in Luxembourg:

“Finally, as to the applicant's arguments on national applications and earlier decisions of the Office, it must be borne in mind that it is settled case-law, first of all, that the Community trade mark system is autonomous and, secondly, that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, and not the Office's practice in earlier decisions (see judgments in Cases T-122/99 Procter & Gamble v OHIM (soap bar shape) [2000] ECR II-265, paragraphs 60 and 61; T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; and T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 66). Accordingly, the Office is bound neither by national registrations nor by its own previous decisions. Furthermore, as the Office rightly argued, neither the reference to a national registration that postdates the examiner's refusal of the application for registration, nor the reference to registrations by the Office that are open to subsequent challenge before the bodies responsible for reviewing their legality, may be accepted as relevant.”

(Judgment of the General Court dated 5 December 2002 in the case T-130/01 REAL PEOPLE, REAL SOLUTIONS, par. 31)

7. Seeing the sign the relevant consumers are left in the dark about the nature of the goods.

SAFELINK indeed does not reveal the nature of the goods, which are high-tech fire-fighting control apparatus, but it does not have to, because according to the Regulation a sign must be excluded from trade mark protection, if it describes any characteristic of the goods, not necessarily the nature of the goods therefore. (see under 1.)

• Conclusion:

• The expression “SAFELINK” is an understandable English word combination which tells the relevant trained fire fighters that the goods (high-tech fire-fighting control apparatus) enable the members of a fire squad to organize, direct and redirect all relevant data for the fire through secure connections (safe links).

• The sign is descriptive of characteristics of the goods and is therefore to be refused based on article 7(1)(c) EUTMR in respect of all goods.

• Furthermore, signs like the one under examination which consist of ordinary dictionary words with a pertinent meaning in relation to the goods and with a normal grammatical structure are hardly ever considered badges of a special commercial origin.

• These word combinations lack any perceptible difference² from the usual ways of describing the goods and services that might confer a little distinctiveness on the whole combination and they should therefore be refused under article 7(1)(b) EUTMR.

• It must be made clear that omitting a blank space between an adjective and a noun does not represent this perceptible difference.

• How to appeal this decision

Under Articles 66-68 of the European Union Trade Mark Regulation no. 2017/1001 you have a right to appeal against this decision. A notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed.

The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720,00 has been paid.

Robert KLIJN BRINKEMA