Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/12/2018

surfplugs Ltd

OLD SCHOOL HOUSE ELSTON LANE

COPPLESTONE EX17 5NS

REINO UNIDO

Application No:	017938323
Your reference:	SURFPLUGS
Trade mark:	SURFPLUGS
Mark type:	Word mark
Applicant:	surfplugs Ltd OLD SCHOOL HOUSE ELSTON LANE COPPLESTONE EX17 5NS REINO UNIDO

1. The Office raised an objection on 16/08/2018 pursuant to Article 7(1)(b) and (c) EUTMR 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.

2. The applicant submitted its observations on 28/08/2018 which may be summarised as follows:

• Surfplugs are not generic earplugs but require ear impressions taken by a medically trained professional. The applicant´s Surfplugs will only fit the client/patient they are custom made for. They protect against Surfers Ear (Exostosis); a common but preventable condition of the ear. The Office is requested to reconsider the objection.

3. Pursuant to Article 75 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).

The Office cannot find anything distinctive about the word mark SURFPLUGS in relation to the goods objected to.

“Surf plugs” may not yet be a commonly used expression, however, there exists similar expressions that are used generically such as “swim plugs”.

See examples below:

Swim plugs and noise protection

You can order custom-made swim plugs and noise protection from CHS.

https://www.chs.ca/swim-plugs-and-noise-protection

Swim plugs

Swimmers of all ages and abilities can experience sensitivity to water in the ear.

Custom made swim plugs are waterproof when surface swimming and offer protection for those prone to ear infections or other problems. Swim plugs are a safe, effective way to protect your ears and prevent discomfort whilst continuing the activities you enjoy.

https://maryharehearingservices.co.uk/swim-plugs

There is also some generic use of the expression “surf plugs””, see examples below:

How you can prevent the condition ever happening?

I researched and came across a few surfplugs that are designed to prevent surfer’s ear by keeping the wind and water out. I spent £80 for some personalised moulded surfplugs, but they were so uncomfortable and kept falling out, plus I couldn’t hear a thing, generally ruining the overall surf experience for me.

https://www.northcore-europe.com/northcore-blog/northcore-surfshields-surfers-ear-plugs-review-krissie-claire.html

SLEEP PLUGS, SWIM PLUGS, SURF PLUGS

If you spend a lot of time in cold water (or wind), we can make you “surf plugs” which allow sound in, but block water from your ears. This can help prevent “surfers ear” (exostoses) from forming in your ear canal.

http://kapitihearing.co.nz/sleep-plugs-swim-plugs-surf-plugs

As can be seen, the expression “surf plug” is used to describe a type of earplug to be used while surfing to e.g. prevent Exostosis. The applicant´s medical ear plugs and protection devices are also used for this purpose, namely as a custom made protective device to block out wind, cold, water etc. in order to prevent ear infections such as surfers ear.

In relation to the specific goods applied, for it is highly unlikely that the relevant public will perceive the word mark SURFPLUGS as fanciful trade mark originating from one specific trader.

The Office finds that there is a clear and direct link between the words in the mark and the goods applied for. There is nothing unusual, unique or suggestive about the word mark SURFPLUGS. In the absence of an additional distinctive element, such as a company name or a fanciful logo, there is nothing in the mark that might enable the relevant public to perceive the mark as an indication of commercial origin.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 017938323 is hereby rejected for rejected for the following goods:

Class 10 Hearing protection devices; Ear plugs [ear protection devices]; Ear plugs for medical purposes; Ear plugs for protection against noise; Hearing protectors without the ability to reproduce or transmit sound; Noise protection means in the form of deformable ear plugs.

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.

Cecilia ÅLIN