Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 27/06/2019

ROSCHIER BRANDS, ATTORNEYS LTD.

Kasarmikatu 21 A

FI-00130 Helsinki

FINLANDIA

Application No:	017779919
Your reference:	TM10175EU00
Trade mark:	3 5 7
Mark type:	Figurative mark
Applicant:	Nokian Tyres plc PL 20 37101 Nokia FINLANDIA

The Office raised an objection on 17/05/2018, pursuant Article 7(1)(b) and (c) 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.

On 02/07/2018, the applicant submitted observations and requested the limitation of the list of goods and services to wheels for land vehicles, namely, tyres for automobiles, in Class 12.

On 21/12/2018, the Office confirmed that the specification of goods and services had been limited as requested and informed the applicant that, in view of the restriction, the previous objection on descriptiveness under Article 7(1)(c) EUTMR had been waived. On the same day, following a new examination of the application, the Office raised a new objection pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

On 04/02/2019, the applicant requested that the list of goods and services be further restricted to: wheels for land vehicles, namely, tyre treads for automobiles, in Class 12. On 26/06/2019, the Office confirmed that the specification of goods and services had been limited as requested.

On 04/02/2019, the applicant also submitted its observations, which may be summarised as follows:

1. The inclusion of a mark description stating: ‘The sign is to be used in the tread of vehicle tyres’ is requested for a better understanding of the scope of the application, as long as this is acceptable by the Office.

2. The Court of Justice has already ruled that signs composed exclusively of numerals with no graphic modifications may be registered as trade marks (1/03/2011, C-51/10P, 1000, EU:C:2011:139, § 29-30) and has stressed that trade marks consisting of numerals must be examined with specific reference to the goods and/or services concerned (09/09/2010, C-265/09P, α, EU:C:2010:508, § 31-32). A numeral may, therefore, be registered as a EUTM if it is distinctive for the goods and services covered by the application for registration and is not merely descriptive or otherwise non-distinctive for those goods and services.

3. The Office has only submitted pictures illustrating use of numerical information on the side of tyres and not on the tread. The EUIPO has not provided any evidence that numerical or any other technical information is used on the tread of tyres. According to the market reality it is uncommon and unusual to use numerical trade marks in the treads. ‘For the sake of clarity and for the attention of the examiner, the word tread is often used casually to refer to the pattern of grooves molded into the rubber, but those grooves are correctly called the tread pattern, or simply the pattern. The grooves are not the tread, they are in the tread.’ The applicant is not placing the trademark on the grooves but on the tread, whether grooved or not. This is unique and uncommon place for any signs as the technical indications are strictly regulated and must thus be inserted on the side of the tyre. The applied trademark is not a technical indication and does not have any meaning in respect of the tyre treads for automobiles applied for in Class 12.

4. If a trademark has a minimum degree of distinctive character, as in the present case, it is not devoid of any distinctive character, in which case this ground of refusal cannot apply.

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.

General remarks on Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

1. As regards the applicant’s first argument, concerning the request to introduce a mark description in the application, it must be clarified that the purpose of a mark description is to define what can be seen in the mark representation. Notwithstanding that the sign under examination has been applied for as a figurative mark, it is evident that the representation of the mark consists of three digits in standard script and layout only featuring a wider than average spacing between them. The inclusion of the requested mark description cannot be considered to define the mark representation as applied for and therefore is not appropriate in the present case.

Furthermore, an explanation indicating how or where the mark is to be used cannot be considered to be a proper description of the sign and in any case, the requested description would neither add any distinctiveness to the mark nor change the perception of the sign by the relevant consumer, who will not be confronted with such a description. The inclusion of the description cannot be accepted.

2. As to the second argument, and although the Office agrees with the applicant that signs exclusively composed of numerals with no graphic modifications may effectively be registered as trade marks it must be reminded that, as admitted by the applicant, the registration of a sign as a trade mark is subject to the condition that it is capable of distinguishing the goods or services of one undertaking from those of other undertakings (14/07/2017, ECLI:EU:T:2017:501, 4600, § 21). In the present case, the Office remains of the opinion that the sign does not satisfy that requirement in relation to the goods that remain designated as will be demonstrated below.

Furthermore, and contrary to what the applicant seems to believe, the distinctive character of the sign applied for has been assessed not in the abstract but, first, with reference to the specific goods for which protection is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods. This is clearly supported by the specific reasoning provided in each of the objection letters issued by the Office (on 15/05/2018 and on 21/12/2018) and the accompanying information and references supporting the Office conclusions. As a matter of fact, it was precisely due to the amendment of the specification of goods, and thus to the fact that the sign applied for had to be assessed in respect of different goods, that a second objection was raised by the Office.

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T–305/02, Bottle, EU:T:2003:328, § 34).

Following the new limitation of the specification of goods and services, protection of the sign is now sought for the following goods:

Class 12: Wheels for land vehicles, namely, tyre treads for automobiles.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, a high attentiveness on part or the whole relevant public does not imply that a sign is less subject to any absolute grounds of refusal. Furthermore, signs which are not (fully) understood by consumers can be grasped immediately by the specialised public, in particular if the sign is composed of indications which relate to the field in which the latter public is active (11/10/2011, T-87/10, Pipeline, § 27-28).

From the above it is clear that when perceiving the sign applied for, , in relation to the goods that remain designated, the relevant European consumer would identify it with a three digit numeral, namely ‘357’ (or three digits).

The fact that the applicant intends to use the sign on a specific section of the treads applied for has no relevant impact on the assessment of the distinctive character of the sign since the examination of a trade mark should be based on objective criteria and that the alleged intentions of the applicant can have no bearing on the assessment of a mark in respect of absolute grounds for refusal pursuant to Article 7 EUTMR.

As regards the new specification, the Office considers that limiting the goods of the application to tyre treads for automobiles does not change the fact that the sign is devoid of distinctive character for the goods that remain designated (as can easily be understood from the meaning and direct connections that the relevant body of consumers would immediately perceive as will be demonstrated below).

The sign for which protection is sought, , would simply be perceived by the relevant public as a non-distinctive indication in relation to the marketing of the goods in question.

Having regard to the particular context of reference, it is reminded that the tyre tread is the external rubber part of the tyre which is in contact with the road. It is designed to ensure tyres can grip the surface of the road whilst driving and provides resistance against aquaplaning and enhances steering control. Having sufficient tyre tread is particularly important in wet conditions, as it works to disperse water away from the tyre and retains traction with the surface of the road. Tyre treads are thus important to the driving and safety of a car and manufacturers often provide information to help maintaining them in good working conditions (as tyre tread wears with use).

In this context it cannot be maintained that use of numerals is meaningless in relation to tyre treads. As already mentioned in the previous notification, and according to the market reality in the field of automobile tyres (and tyre treads), there is a great amount of technical information expressed in numbers provided to the consumer on the goods in question. Besides the great number of indications already mentioned on 21/12/2018, some of which remain equally valid for the goods now designated, it cannot be ignored that there exist more specific numeral indications referring to ‘tread wear’, ‘tread depth’, ‘tread wear index’, ‘tyre treads grades’, ‘tyre treads numbers’ or even to the composition of the tyre tread, just to cite a few, that are used in relation to the goods that remain designated in the application.

In this respect and for purely illustrative purposes, the applicant is invited to read the following excerpts from the internet, extracted on 19/06/2019 at the indicated addresses:

Optimal depths

A new car tyre begins life with approximately 8-9mm of tread depth. Legally, you can drive on them until they reach a minimum depth of the tread of 1.6 mm, across 75% of the tyre’s width and all around its circumference. However, we strongly recommend that you replace your summer and all-season tyres when they reach 3mm and your winter tyres at 4mm. That’s because, once they reach those depths, the tyres start to wear quickly.

https://www.uniroyal-tyres.com/car/tyre-guide/driving-tips/how-to-check-your-tyres-tread-depth

Treadwear: A numeral measure of how long the tread of a tire can be expected to last.

https://www.yourdictionary.com/treadwear

Advice & Guidance on Tyre Tread and UK Tyre Law

UK Tyre Law : Tyre tread and the Law

The law requires car tyres to have a minimum tread depth of 1.6mm in a continuous band around the central three quarters of the tyre. To help you judge how much tread you have on your car tyres, manufacturers often mould tread bars at roughly 1.6mm.

If you can see these bars your tyres are about to become illegal and unsafe. However, for optimum safety, most manufacturers recommend that your tyres are changed at 3mm.

Many manufacturers now include a Tread Wear Indicator (TWI) within the grooves of the tyre tread which become more visible as the tyre wears down. Whilst these markings are an indicator, always check the tread depth using a tread depth gauge and check your tyres regularly for bulges or wear.

https://www.national.co.uk/information/tyre-fitting

Treadwear grades are an indication of a tyre’s relative wear rate. The higher the treadwear number is, the longer it should take for the tread to wear down.

A control tyre is assigned a grade of 100. Other tyres are compared to the control tyre. For example, a tyre grade of 200 should wear twice as long as the control tyre

Of current tyres:

15% are rated below 200

25% are rated 201 – 300

32% are rated 301 – 400

20% are rated 401 – 500

6% are rated 501 – 600

2% are rated above 600

https://www.etyres.co.uk/tyres-ratings-nhtsa/explanation-tread-wear-ratings/

Tyre Tread Depth

Do you know that you should maintain at least 1.6mm (experts recommend 3mm) tread depth to drive safely? The UK Ministry of Transportation ensures that every single vehicle should have at least 1.6mm tyre tread. If you breach this rule, you might have to pay fines of up to £2500 and receive three penalty points for each tyre which doesn’t meet the minimum requirement.

The current minimum legal requirement is 1.6mm. Take a 20p coin and insert it into your car’s treads. If you can see the coin sides, then it is highly likely that those tyres are about to become illegal and need replacement as soon as possible.

Also, a large number of manufacturers now include a tread wear indicator (TWI) that sits within the grooves of the tyre. These will become more and more visible as the tyre begins to wear down. Always check for TWI along with any signs of cut or bulges on the tyre body.

The lower your tread depth, the lower your tyres grip are on the road. This, in turn, increases your car’s braking distance. If you are concerned, then bring your vehicle to Road circles immediately. Our experts will inspect your vehicle and advise on what to do next.

https://www.roadcircles.co.uk/tyre-tread-depth

https://www.tyreleader.co.uk/tyres-advices/utqg

https://www.justtyres.co.uk/pages/how-to-measure-tyre-tread

https://www.motorvation-bedford.co.uk/tyre-advice/maintaining-your-tyres/

The writing on your tyres can be confusing. The sidewall of typical tyre is imprinted with myriad codes and numbers that are used to identify the size and physical features of that tyre as well as details relating to its manufacture. Many of these tyre markings are of little or no importance to the driver while others are essential when it comes to choosing a replacement tyre. (tyre size, width, aspect ratio, radial, wheel diameter.

https://www.kwik-fit.com/tyres/information/writing-on-my-tyres

Decoding the markings on the tyre sidewall

See those markings on the tyre sidewall? They are shorthand for a veritable wealth of information. The tyre model name is present and correct, obviously, but that’s just the start. There’s also a sequence of numbers detailing the load index, speed rating, tyre size, construction and much more besides

https://www.continental-tyres.co.uk/car/all-about-tyres/tyre-essentials/tyre-markings

From the above, it can be safely concluded that the use of numerals, markings and indicators is common in the relevant market of tyre treads. Due to the fact that numerals are used to provide information about a great variety of features of tyre treads and that, despite efforts towards standardisation, such information is provided or displayed in a variety of ways, the sign , would simply be perceived by the relevant public as a non-distinctive indication in relation to the marketing of the goods in question. Even if the relevant consumer does not identify the exact meaning of it will certainly perceive it as numerical information about some (physical) feature of the tyre tread (as could be e.g. a tread wear grade, a tread wear indicator, some indication about the tyre tread composition).

Notwithstanding that different meanings may be associated with , it is noted that a word sign must be refused registration under Article 7(1)(b) EUTMR if one of its possible meanings is perceived as being devoid of distinctive character (25/04/2013, T-145/12, Eco Pro, EU:T:2013, 220, § 34 and the case-law cited therein).

Although the sign for which protection is sought, , contains certain stylised elements consisting of a wider than average spacing between the numbers composing the mark, these elements are so negligible in nature that they do not endow the trade mark as a whole with any distinctive character. Those elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function in relation to the goods for which protection is sought.

The above conclusions are not called into question by the applicant’s claims that the sign does not appear in the provisions on standard tyre-size designations and dimensions of the Regulations issued by UNECE or that the sign applied for does not have a specific meaning in respect of tyre treads for automobiles in Class 12.

Furthermore, it should also be recalled that for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods or services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

3. As to the claim that the documents provided by the Office only illustrate use of numerical information on the sidewall of tyres and not on the tread and that no evidence that numerical or any other kind of technical information is used in or on the tread of tyres has been submitted, it is noted that even if no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Although use of the sign by others on the Internet can be a valid indication when considering the applicability of Article 7(1)(b) or (c) EUTMR, it is not a conditio sine qua non.

(28/06/2007, R 371/2007‑2, PUBLIC STORAGE, § 16).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market.

(05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

However, the applicant’s mere claim that will become associated in the mind of the relevant public with the goods applied for and that the relevant public will be able to memorise the sign easily and instantly as a distinctive trade mark for those goods, without further evidence, is not convincing as such.

In this respect and for purely illustrative purposes, the applicant is invited to read the following excerpts from the internet, (extracted on 19/06/2019 at the indicated addresses) illustrating that numerical information and relevant markings or indicators (showing for instance tread wear) are also placed on the tyre tread:

‘a sticker on the tyre tread’

EU Tyre Labelling Regulation 1222/2009 Industry Guideline ... – ETRMA

www.etrma.org/.../2012-07-05--industry-guideline-on-tyre-labelling-(vers4).pdf

This information will also be incorporated into technical promotional literature and will be visibl on a label placed on the tyre tread.

http://www.sailuntyre.eu/tyre-labelling/

Indications on tyre tread are not limited to numbers, see for example:

How do I know when my tyres are worn?

https://www.mynrma.com.au/cars-and-driving/roadside-assistance/car-tyres/resources/how-do-i-know-when-my-tyres-are-worn

REPLACEMENT TYRE MONITOR

https://www.generaltire.co.uk/car/service/our-technologies

https://www.halfordsautocentres.com/advice/tyres-advice/tread-depth-and-safety

https://www.carbuyer.co.uk/tips-and-advice/152195/tyre-tread-depth-what-you-need-to-know

Therefore even if according to the market reality it is uncommon or unusual to use numerical trade marks in or on the treads, this is not the case as regards numerical information or relevant indicators. Likewise, notwithstanding that the applicant is not placing the trademark on the grooves but in or on the tread (whether grooved or not) and that the sign is not a technical indication, the fact remains that the relevant consumer will not identify the sign with a particular commercial origin of the goods.

4. Although the Office agrees with the applicant in that a minimum degree of distinctiveness is sufficient to render the mark acceptable, it is clear, from the above analysis and explanations, that in the present case the expression under analysis contains a non-distinctive statement about the goods of reference. It cannot, therefore, be reasonably maintained that the term applied for is too vague or meaningless with regard to such goods and that it will enable the relevant consumers to identify their origin.

in order to have the minimum degree of distinctiveness required under Article 7(1)(b) EUTMR, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the European Union trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin.

(13/06/2007, T‑441/05, I, EU:T:2007:178, § 55.)

Even from the point of view of the specialised public, the mark in question has no characteristic element or any memorable eye-catching features likely to confer a minimum degree of distinctive character to the sign. The Office considers that the sign at issue is likely to go unnoticed by most consumers or that it will not be perceived as a sign denoting a connection with a specific undertaking.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 779 919 - 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.

Isabel DE ALFONSETI HARTMANN