Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 07/12/2018

SCHÖNHERR RECHTSANWÄLTE GMBH

Schottenring 19

A-1010 Wien

AUSTRIA

Application No:	017933413
Your reference:	TECONN_EM_51002
Trade mark:	ELECTRO-TAP
Mark type:	Word mark
Applicant:	TYCO ELECTRONICS SERVICES GMBH Rheinstr. 20 CH-8200 Schaffhausen SUIZA

The Office raised an objection on 10/08/2018 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 26/09/2018, which may be summarised as follows:

1. The combination ‘ELECTRO-TAP’ is a newly invented, unique and fanciful expression that is not compliant with any grammar rules. The word is ungrammatical in English and is not used in written or spoken English. The combination of the words ‘ELECTRO’ and ‘TAP’ is not a known word and therefore not to be found standing alone in a dictionary. This specific juxtaposition has in fact no clear and obvious meaning.

2. The EUIPO merely selected one meaning for each word from among several possible meanings indicated by the sources. In this regard, the applicant, to support its claim that both terms had several different meanings, provided in exhibits B and C printouts from various dictionaries as well as EUIPO OD and BoA decisions in which different meanings had been assumed. The applicant claims that even if the sign could potentially be perceived by the relevant public as indicating a connection with electronics or an electronic manner of functioning, the specific combination with the additional word element ‘tap’ (which has several different meanings and refers to various different areas) is sufficient to support the conclusion that the mark has inherent distinctive character.

3. The trade mark ‘ELECTRO-TAP’ possesses a certain originality or resonance, requiring at least some interpretation by the relevant public or setting off a cognitive process in their minds.

4. The applicant points out that the trade mark ‘ELECTRO-TAP’ has already been registered as a national trade mark in several European Union jurisdictions for decades, namely in Spain since 1979, in France since 1988, in Italy since 1985 and in Sweden since 1979.

5. The applicant refers to various trade marks accepted by the Office:

• ELECTRO-PARC (EUTM 9192345)

• ELECTROSCALE (IR 1423383)

• ELECTRO VITA (EUTM 9389487)

• ELECTRO WORLD (EUTM 4413399)

• ELECTRO TRAC (EUTM 8977811)

• ELECTRO FREEZE (EUTM 951723).

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)(c) EUTMR

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 to the applicant’s arguments:

1. The combination ‘ELECTRO-TAP’ is a newly invented, unique and fanciful expression that is not compliant with any grammar rules. The word is ungrammatical in English and is not used in written or spoken English. The combination of the words ‘ELECTRO’ and ‘TAP’ is not a known word and therefore not to be found standing alone in a dictionary. This specific juxtaposition has in fact no clear and obvious meaning.

As previously pointed out, the relevant English-speaking consumer would understand the sign as an electric device that controls the flow of a liquid or gas. Both definitions were extracted from the Collins dictionary and constitute clear evidence of the respective meanings. The sign is made up of two words, ‘ELECTRO’ and ‘TAP’, which are juxtaposed in accordance with the rules of English grammar and form a single expression. The Office is of the opinion that the combination ‘ELECTRO-TAP’ is not a newly invented, unique and fanciful expression that is non-compliant with any grammar rules but rather a compound word — that is to say, one that consists of two words linked together. A mere combination of elements, each of which is descriptive of characteristics of the goods or services themselves, remains descriptive of those characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between 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 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).

Furthermore, it is not necessary for the Office to prove that the word is the subject of a dictionary entry in order for a sign to be refused. For composite/compound terms in particular, dictionaries do not mention all possible combinations. What matters is the ordinary and plain meaning. In this regard, 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).

In the same way, combinations of a prefix — such as ‘electro-‘, ‘euro-‘, etc. — with purely descriptive terms must be refused where the prefix element reinforces the descriptiveness of the sign as a whole or where there is a reasonable connection between that term and the goods or services concerned. This is in line with the judgment of 07/06/2011, T‑359/99, EuroHealth, EU:T:2001:151.

2. The EUIPO merely selected one meaning for each word from among several possible meanings indicated by the sources. In this regard, the applicant, to support its claim that both terms had several different meanings, provided in exhibits B and C printouts from various dictionaries as well as EUIPO OD and BoA decisions in which different meanings had been assumed. The applicant claims that even if the sign could potentially be perceived by the relevant public as indicating a connection with electronics or an electronic manner of functioning, the specific combination with the additional word element ‘tap’ (which has several different meanings and refers to various different areas) is sufficient to support the conclusion that the mark has inherent distinctive character.

The Office agrees that both terms might also have different meanings. However, the fact that the sign at issue can have several meanings does not suffice to make it distinctive. The fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

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, emphasis added.)

Consequently, a word mark that is descriptive of characteristics of goods or services for the purpose of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purpose of Article 7(1)(b) EUTMR (12/06/2007, T‑190/05, Twist & Pour, EU:T:2007:171).

3. The trade mark ‘ELECTRO-TAP’ possesses a certain originality or resonance, requiring at least some interpretation by the relevant public or setting off a cognitive process in the minds of that public.

The meaning of the sign provided by the Office is clear and does not leave any room for doubt. The dictionary entries constitute clear evidence of both meanings and prove how the relevant public will ordinarily understand both words in question. Thus, the sign will not trigger any mental process or require any interpretation in order to arrive at its meaning. On the contrary, as explained in the Notice of absolute grounds for refusal issued by the Office on 10/08/2018, it conveys a straightforward and meaningful message that the goods applied for are electrical devices or components intended for use in controlling the flow of water or another liquid.

4. The applicant points out that the trade mark ‘ELECTRO-TAP’ has already been registered as a national trade mark in several European Union jurisdictions for decades, namely in Spain since 1979, in France since 1988, in Italy since 1985 and in Sweden since 1979.

As regards the national trade marks referred to by the applicant (without specifying the trade marks on which the applicant refers to), it must be pointed out that 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).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

5. The applicant refers to various trade marks accepted by the Office:

• ELECTRO-PARC (EUTM 9192345)

• ELECTROSCALE (IR 1423383)

• ELECTRO VITA (EUTM 9389487)

• ELECTRO WORLD (EUTM 4413399)

• ELECTRO TRAC (EUTM 8977811)

• ELECTRO FREEZE (EUTM 951723).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, the mere fact that the cited trade marks contain the word ‘ELECTRO’ does not necessarily make them similar to the sign applied for. Every trade mark is assessed on its own merit, and the final assessment is based on specific grounds in each particular case. Furthermore, trade marks referred to by the applicant contain different verbal elements in addition to the world ‘ELECTRO’. Therefore, the overall impression created by each of these marks is not similar to that created by the sign ‘ELECTRO-TAP’.

Moreover, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for EUTM No 17 933 413 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta, for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Michaela POLJOVKOVA