Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/08/2018

LICHTENSTEIN, KÖRNER & PARTNER mbB

Heidehofstr. 9

D-70184 Stuttgart

ALEMANIA

Application No:	017518911
Your reference:	SA-17/01165ma
Trade mark:	BIG ENGINEERING
Mark type:	Word mark
Applicant:	Bjarke Ingels Group A/S Kloverbadsgade 56 DK-2500 Valby, Copenhagen DINAMARCA

The Office raised an objection on 07/12/2017 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, after an extension of the time limit to present observations, submitted its observations on 03/04/2018, which may be summarised as follows.

1. The sign applied for is a slogan. Slogans can be registered as a trade mark like any other sign. Though slogans may carry a greater risk of being deemed devoid of any distinctive character, this is not true for the case at hand. The sign applied for is imaginative, with certain originality and sets off a cognitive process in the minds of the consumers and therefore, possesses the necessary degree of distinctiveness.

2. The slogan ‘BIG ENGINEERING’ per se makes no sense; the term ‘big’ only makes sense when there exists a reference scale, how much engineering constitute large scale engineering? Different meanings of ‘big’ in dictionaries like Merriam-Webster Dictionary and adjectives for ‘engineering’ give ‘BIG ENGINEERING’ ambiguity (Appendixes 1, 2 and 3). There is no sufficiently direct and specific relationship between the sign and the services applied for.

3. Similar previous EUTM registrations.

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).

1. The sign applied for is a slogan. Slogans can be registered as a trade mark like any other sign. Though slogans may carry a greater risk of being deemed devoid of any distinctive character, this is not true for the case at hand. The sign applied for is imaginative, with certain originality and sets off a cognitive process in the minds of the consumers and therefore, possesses the necessary degree of distinctiveness.

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 present case, the mark ‘BIG ENGINEERING’ for engineering services does not leave any room for doubt in the mind of the relevant consumers. The company’s competencies or scope of action relates to engineering and particularly to large-scale engineering.

Moreover, the mark has been considered descriptive under Article 7(1)(c) EUTMR, meaning that the lack of any distinctive character stems from the descriptive condition of the sign in relation to the services claimed. In consequence, it is not relevant if the applicant considers the mark a slogan and explains one of its possible meanings. Moreover, ‘BIG ENGINEERING’ would not be considered by the relevant consumer as ‘engineering filled with or characterized by enthusiasm and interest’ as put forward by the applicant. On the contrary, the first, obvious and direct meaning of the sign that comes to the mind of the relevant consumer is that of ‘large scale engineering’.

2. The slogan ‘BIG ENGINEERING’ per se makes no sense; the term ‘big’ only makes sense when there exists a reference scale, how much engineering constitute large scale engineering? Different meanings of ‘big’ in dictionaries like Merriam-Webster Dictionary and adjectives for ‘engineering’ give ‘BIG ENGINEERING’ ambiguity (Appendixes 1, 2 and 3). There is no sufficiently direct and specific relationship between the sign and the services applied for.

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).

Moreover, the Office is of the opinion that the sign’s most obvious meaning relate to the size of the engineering projects; therefore it can’t be other than descriptive of the services provided by the company. Even though the applicant is right in the argument that the term ‘big’ can only make sense when referenced to other sizes, the meaning of ‘big engineering’ makes completely sense in the mind of the relevant consumer. It is not difficult to imagine engineering projects of a bigger than normal size, projects that are considered somehow extraordinary due to its important or huge size.

In relation to the services applied for in Class 42, it is difficult to conceive what impression the combination ‘BIG ENGINEERING’ would give to the English-speaking consumer of the contested services other than large-scale engineering. There is no element of fancifulness or any unusual combination of words that might require something of consumers, such as a grammatical analysis, before they would understand the meaning of the mark applied for in relation to the services in question. Consequently, even if the expression ‘BIG ENGINEERING’ were grammatically or linguistically incorrect and could be considered novel – which is not the case – all the elements composing the mark would be understood by the relevant public. Therefore, the trade mark is not considered an unusual combination of words. Consequently, it would be difficult to conceive that the English-speaking public in the European Union would regard such a simple, meaningful combination as a trade mark rather than a word combination that describes the services at issue.

2. Similar previous EUTM registrations.

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).

However, the Office would like to mention that the EUTMRs pointed out by the applicant, EUTM No 000110171 ’BIG BITE’ for sandwiches in Class 30; EUTM No 000802306 ’BIG BLOCK’ for motors and engines in Classes 7 and 12 and EUTM No 10405650 ’BIG DNA’ in Classes 42 and 44, do not have a clear meaning and therefore, do not have a direct link in relation with the goods and services they are applied for.

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 17 518 911 BIG ENGINEERING is hereby rejected for all the 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.

Jesús ROMERO FERNÁNDEZ