Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/01/2019

URQUHART-DYKES & LORD LLP

Arena Point Merrion Way

Leeds Leeds LS2 8PA

REINO UNIDO

Application No:	017929114
Your reference:	T243510EM/GIP
Trade mark:	pH-Xact
Mark type:	Word mark
Applicant:	GBUK Group Limited Woodland House, Blackwood Hall Business Park Selby North Yorkshire YO8 5DD REINO UNIDO

The Office raised an objection on 02/08/2018 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 submitted its observations on 15/10/2018, which may be summarised as follows.

1. The word ‘xAct’ has been registered by the EUIPO for Class 9 goods (No 884 890, No 3 124 641, No 9 161 043 and No 9 998 527).

2. The mark has the minimum level of distinctiveness. It has already been registered by the United Kingdom IP Office (No 3 293 634).

3. The EUIPO has registered very similar marks for Class 9 goods: No 15 089 766 ‘Easy pH’ and No 1 132 416 ‘pH SAFE.’

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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).

The trade mark applied for is a word mark ‘pH-Xact’, which means the exact (correct) acidity or alkalinity value of a solution. The mark contains the word ‘pH’, which means ‘a measure of acidity or alkalinity. If the value is more than 7, this indicates alkalinity, and less than 7 indicates acidity’ (information extracted from Collins English Dictionary on 02/08/2018 at https://www.collinsdictionary.com/dictionary/english/ph). Despite the missing letter ‘E’, the term ‘Xact’ is pronounced ‘exact’ and means ‘correct in every detail; strictly accurate; precise, as opposed to approximate; neither more nor less’ (information extracted from Collins English Dictionary on 02/08/2018 at https://www.collinsdictionary.com/dictionary/english/exact). Therefore, the relevant consumer will perceive the mark not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use. It is also in the public interest that expressions with purely informational value should not be reserved for a single trader (such a mark may, of course, be registered if the applicant can demonstrate evidence of acquired distinctiveness).

Registering a trade mark gives the mark’s applicant a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. By definition, those indications are not capable of constituting trade marks.

The mark in question has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought are capable of displaying an exact value in relation to acidity/alkalinity. The mark describes the characteristics of the goods quite unambiguously by giving consumers relevant information regarding their nature and intended purpose.

The goods for which registration is sought target the professional public. It is clear that the relevant consumers will perceive the word ‘pH-Xact’ as a meaningful expression in relation to the contested goods.

Thus, the mark applied for, ‘pH-Xact’, clearly conveys obvious and direct information about the nature and intended purpose of the contested goods. The words that make up the mark applied for will be understood by the relevant – professional – English-speaking public, because the mark is not imaginative, metaphorical or unusual. The word does not contain any additional element capable of giving the mark distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the goods, 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 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).

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin that distinguishes the applicant’s goods from those of competitors.

Article 7(1)(b) EUTMR – general remarks

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

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).

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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘pH-Xact’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead understand that the goods are capable of displaying an exact value in relation to acidity/alkalinity.

The mark is composed of the verbal element ‘pH-Xact’ written in standard characters. The goods to which an objection has been raised and for which registration is sought are specialised goods and target mainly a professional public. In view of the nature of the goods in question, the relevant public’s degree of attention will be rather high.

A mark that would simply be seen as a descriptive mark cannot guarantee the identity of the origin of the goods sold under the mark to consumers or end users by enabling them to distinguish those goods from others that have a different origin without any potential for confusion. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

As regards the national decision (No 3 293 634) referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

As regards the applicant’s argument that a number of similar registrations (No 884 890, No 3 124 641, No 9 161 043 and No 9 998 527, No 15 089 766 ‘Easy pH’ and No 1 132 416 ‘pH SAFE’) 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).

Furthermore, the marks mentioned either contain different word elements from those in the mark applied for or the goods and services for which registration was sought are different. Therefore, the Office cannot take these decision into account in the present case.

The mere fact that the Office has registered a trade mark at some point, from a different point of view or perhaps in error, does not entitle even the same applicant to make a claim for subsequent registration. The Office strives to be consistent and always gives consideration to its previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms, commercial reality and the jurisprudence with regard to them.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive and non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 17 929 114 is hereby rejected for the following goods:

Class 9 Scientific apparatus and instruments; acidity level testing apparatus; acidity meters; acidity analysers; parts and fittings for the aforesaid goods.

The application may proceed for the remaining goods.

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.

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