Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/09/2018

SIPARA LIMITED

Unit 1 Rochester House Eynsham Road

Farmoor Oxfordshire OX2 9NH

REINO UNIDO

Application No:	017784117
Your reference:	TM9977EU00.NB.DH
Trade mark:	PILOTI
Mark type:	Figurative mark
Applicant:	Canadian Tire Corporation, Limited 2180 Yonge Street Toronto Ontario M4P 2V8 CANADÁ

The Office raised an objection on 06/03/2018 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 request, submitted its observations on 05/07/2018, which may be summarised as follows.

1. The Office has accepted in the past the figurative marks 9 052 903 and 14 722 268 as well as the word mark application 14 722 276 for goods in Class 25 containing the same verbal element ‘PILOTI’. The Office has also accepted marks containing the verbal element ‘pilot’.

2. The applicant argues that there is no direct link between the semantic meaning of ‘piloti’ and the goods for which protection is sough. In order to become a pilot either in the aviation or in formula 1 one need to undergo intensive training and the goods at issue are items of clothing directed at public at large and not to pilots.

3. Registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor.

4. The Office erred in fining that the stylised elements of the marks are negligible and do not confer to it any distinctive character.

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).

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).

The examination of absolute grounds for refusal must be full and stringent (see judgment of 6 May 2003, C 104/01, ‘Libertel’, para. 59), and may not just consist of the mere repetition of supposedly comparable decisions.

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. In the present case, the figurative marks cited by the applicant contain different –more stylised- elements and as far as the word mark ‘PILOTI’ is concerned, the Office reminds that it is still at the application stage and not registered yet.

The Office disagrees with the applicant that there is no direct link between the semantic meaning of ‘piloti’ and the goods for which protection is sought. The Office has already illustrated that the relevant Italian/Greek/Bulgarian/Czech/Slovak/Slovenian/Hungarian/Maltese and Dutch speaking consumer would understand the sign as having the following meaning: persons who are qualified to operate an aircraft or Formula1 race driver. The objected goods are sports clothing and athletic footwear that can either be worn by pilots or have the pilot/aviator style. Therefore, the relevant consumer would immediately perceive the sign as providing information about the kind, quality and intended purpose of the goods in question.

As regards to the stylisation of the mark the Office notes the following:

In the examination of a mark, when the verbal element is descriptive/ devoid of distinctive character, it must be examined, in particular, whether the figurative element is striking, surprising or unexpected, or capable of creating in consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the word element. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the word element. This is not the case with the present mark, since the font of the mark is an easily legible and unmemorable typeface and thus devoid of distinctive character. In other words, in order to add distinctive character to a sign, the typeface’s stylisation should be of such a nature as to demand a mental effort from consumers to understand the meaning of the verbal element in relation to the claimed goods and services.

The Office does not agree with the applicant that the stylisation of the mark makes it distinctive and notes that the font contains no peculiarity and its style is not likely to create an immediate and lasting memory on the part of the relevant public, or to distinguish the applicant’s goods from other suppliers in the market.

In terms of the figurative device of the mark, the Office finds that graphic representation depicts a simple representation of two thick stripes of different sizes inclined toward the right side. When viewing the mark in relation to the goods concerned, the relevant consumer would at most perceive the two stripes as a decorative/ornamental feature. The Office also notes that the application 17 784 125 consisting of the representation of the same device has also been objected to as non-distinctive.

The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR (see also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR). The Office considers, therefore, that it is highly unlikely that, without a substantial use the consumer could perceive it as a badge of origin to distinguish the applicant the origin of the goods 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 17 784 117i s 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.

Aliki SPANDAGOU