Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 10/01/2019

MCCONNEL LIMITED

John Frank

Temeside Works

Ludlow, Shropshire SY8 1JL

REINO UNIDO

Application No:	017937122
Your reference:
Trade mark:	MULTIBUGGY
Mark type:	Word mark
Applicant:	McConnel Ltd Temeside Works Ludlow, Shropshire SY8 1JL REINO UNIDO

The Office raised an objection on 07/09/2018 pursuant to Article 7(1)(b) 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 07/09/2018, which may be summarised as follows:

1. The Applicant has a Trade mark for the Agribuggy UK2255003 and has used the name Multidrive for many years. The new vehicle is to fit in between these well-known brands at about 12 tons and therefore it make good sense to combine the two establish terms. The term may be used elsewhere but not in our industry.

2. Would we be better in applying for a Figurative mark containing word elements? As we currently spilt the text into two colours this could work for us.

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)(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).

1. The Applicant has a Trade mark for the Agribuggy UK2255003 and has used the name Multidrive for many years. The new vehicle is to fit in between these well-known brands at about 12 tons and therefore it make good sense to combine the two establish terms. The term may be used elsewhere but not in our industry.

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

For a trade mark to be refused as being devoid of any distinctive character, it is sufficient 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.

In the present case, the sign for which protection is sought, MULTIBUGGY, would simply be perceived by the relevant public as a promotional laudatory slogan highlighting positive aspects of the goods in question, namely that they are multipurpose small motorized vehicles. Therefore, the relevant public will not tend to perceive any particular indication of commercial origin in the sign apart from the description of the commercial information provided by MULTIBUGGY as a particular type of buggy.

2. Would we be better in applying for a Figurative mark containing word elements? As we currently spilt the text into two colours this could work for us.

Indeed, figurative marks with strong figurative elements and stylisation, even if they contain words elements, would most likely be distinctive of the origin of the goods and services. Please be aware that coloured word marks if they are considered to be descriptive and devoid of any distinctive character, the coloured words would not be sufficient to overcome an absolute grounds objection. The practice of the Office has evolved through the years as regards figurative trade marks, and at this point the Office is stricter than it was years ago.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 937 122, MULTIBUGGY, 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.

Jesús ROMERO FERNÁNDEZ