Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/09/2019

BROMHEAD JOHNSON

57-59 High Street

Twyford, Berkshire RG10 9AJ

REINO UNIDO

Application No:	017939207
Your reference:	WBH.22319
Trade mark:	T-SPACER
Mark type:	Word mark
Applicant:	Quanex IG Systems, Inc. 800 Cochran Avenue, Cambridge, Ohio 43725, ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 30/08/2018 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 27/12/2018, which may be summarised as follows.

1. The applicant submits that with regard to the objection on lack of distinctiveness under Article 7(1)(b) EUTMR the documents cited by the examiner in an internet search do not support the conclusion that ‘T-SPACER’ is devoid of distinctive character. The first document refers to a ‘T-shape aluminium spacer’ and the second to a ‘T Shape Butyl Spacer’. The term ‘T-SPACER’ is not used to describe these products and there is no evidence it would be understood as an abbreviation for a ‘T-shape spacer’. With reference to the Article 7(1)(c) EUTMR, the sign ‘T-SPACER’, whilst evoking the idea of a T-shaped spacer, is not directly descriptive of the goods.

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.

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 distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29).

In the present case, bearing in mind the meaning of the word ‘SPACER’ and internet search results provided in the objection letter of 30/08/2018 and shown below, the Office maintains that the relevant English-speaking consumer will understand the words as a meaningful expression: T-shaped a piece of material used to create or maintain a space between two things.

http://www.a-hagl-ingenieure.de/download/CG3_RV_paper.pdf

http://www.digitaluvprinter.com/sale-7502045-t-shape-butyl-spacer-warm-edge-spacer-for-decorative-insulating-glass.html

Considering the above, the Office also maintains that, the relevant consumers would perceive the sign as providing information that the goods for which protection of the sign is sought are T-shaped insulating materials/instruments used to create or maintain a space between two things. Therefore, the sign describes the kind of the goods in question.

In the Office’s view, while it is true that the sign is not ‘T-SHAPED SPACER’, when seeing the term ‘T-SPACER’ on the goods at issue (spacers for insulating glass units) the relevant consumer would not need to make any analytical effort to grasp the message transmitted by the sign and consumer would immediately perceive it in the sense indicated by the Office. In this respect, it is recalled that, contrary to the arguments raised by the applicant, the possible meaning of the expression covered by the mark applied for should not be examined in the abstract, but in relation to the goods concerned as covered by the mark applied for and the consumers for whom they are intended (12/03/2014, T−102/11, T−369/12, T−371/12, IP Zone et al., EU:T:2014:118, § 30).

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

In addition to the abovementioned arguments, in the application for the registration of the EUTM, you included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR in relation to spacers for insulating glass units. You also indicated that this claim was meant as a principal claim.

In support of your claim, you submitted evidence of use on 27/12/2018.

The evidence to be taken into account is the following:

• Data Sheets, dated August 2014 and October 2014 respectively, from the Warm Edge Working Group of Bundesverband Flachglass, the German flat glass trade/standardisation association. Members of the association, namely manufacturers and distributors of building glass products, have access to these data sheets. The documents contain indication ‘Super Spacer TriSeal/T-Spacer Premium Plus’.

• Labels containing indication ‘T-SPACER’ applied to products, which, as indicated by the applicant, were sold in Europe from 2007 to 2018.

• An Edgetech Newsletter from May 2014. English, French, German, Italian and Polish versions. New sizes of ‘T-Spacer’ are mentioned under ‘New Products’ and its equivalent in each language.

• A list of customers receiving the newsletter indicated above.

• Product data sheets and brochures in English and German dating from 2004 to 2017, containing references to a product marked as ‘T-SPACER’. The product is defined, e.g. as a flexible, silicone foam tape product that provides the maximum in perimeter insulation for sealed glazed units or as the base product for creating the unique triple seal design of Super Spacer TriSeal. It incorporates an inner acrylic adhesive seal for immediate unit handling.

• Press articles containing references to a product marked as ‘T-SPACER’ from:

(a) Bauelemente Bau, Germany, dated 02/2017

(b) La Rivista del Vetro, Italy, 10/2009

(c) Glass-Technology International, Italy, 02/2010

(d) Fenestration News, UK, 20/06/2013

(e) GGF (Glass and Glazing Federation) website, UK, 27/06/2017

(f) Glass Global website, Germany, 20/11/2012

(g) Glass on Web website, Slovenia, 27/07/2016

(h) Glass News, UK, 07/2013,

(i) Glass news website, UK, 14/06/2016

(j) Pro Installer, UK, 07/2013,

(k) Pro Installer website, UK, 23/01/2018

(l) Clearview Magazine, UK, 07/2013

• Price lists from 2007, 2012 and 2017 for products marked as ‘T-SPACER’, ‘Super Spacer TriSeal T-Spacer Premium’ and ‘Super Spacer TriSeal T-Spacer Premium Plus’.

• Sales Figures, in numbers of reels, by country for (a) Edgetech Europe GmbH; 2005 to 2018 and (b) Edgetech UK Ltd, 2007 to 2018. Each reel contains several hundred metres of the product.

• Pages from the web site of Edgetech Europe GmbH in 2010, containing indication ‘T-SPACER’.

Assessment of the evidence

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

As regards territorial extent of the evidence submitted, in the present case, as provided in the objection letter of 30/08/2018, the relevant consumer who will perceive the sign as having an established descriptive meaning is the English-speaking consumer. Considering that English is an official language in the following countries: Ireland, Malta and the United Kingdom, the evidence should have been provided at least from those countries. The Office notes that there was no evidence at all from Malta provided by the applicant. In case of evidence, such as data sheets, labels, newsletter, pages from the website of Edgetech Europe GmbH, it is not clear which territory they relate to. The mere fact that the documents are in English is not sufficient to conclude that they originate from/were used or directed to the consumers in Ireland, Malta and the United Kingdom.

Further, in establishing acquired distinctiveness, account may be taken of, inter alia, the following factors: i) the market share held by the mark with regard to the relevant goods or services; ii) how intensive, geographically widespread and long-standing use of the mark has been; iii) the amount invested by the undertaking in promoting the mark for the relevant goods or services; iv) the proportion of the relevant public who, because of the mark, identifies the goods or services as originating from a particular undertaking. See judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 31; 29/09/2010, T-378/07, Représentation d’un tracteur en rouge, noir et gris, § 32.

In the case at hand, the applicant submitted no direct evidence, i.e. no declarations by professional associations or market studies or opinion polls, which would be among most relevant means for proving acquired distinctiveness through use. The evidence submitted is all ‘secondary evidence’, which is merely indicative and cannot substitute the direct evidence. Furthermore, the secondary evidence provided does not include any evidence on market share of relevant product marked with the sign in question, advertising activities and expenses and turnover figures, which could corroborate to the finding the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service as the result of the economic effort made by the trade mark applicant.

The Office points out that he Court has declared that direct evidence such as declarations by professional associations and market studies are usually the most relevant means for proving acquired distinctiveness through use. Invoices, advertising expenditure, magazines and catalogues may help to corroborate such direct evidence (judgment of 29/01/13, T-25/11, Cortadora de cerámica, EU:T:2013:40, § 74). In the present case the applicant provided various press articles, however, without any direct evidence they are not sufficient to draw any conclusions on the perception of the relevant public.

In addition, in the assessment of the evidence it is necessary to take into account the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, superficially, the document appears sound and reliable (judgments of 07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42; 16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 46 et seq.). In this case it is observed that most of the evidence submitted originates from the applicant, i.e. labels, newsletter, a list of customers, product data sheets, price lists, sales figures and pages from the website.

The evidence in this case could serve to demonstrate that the sign ‘T-SPACER’ was used for spacers for a number of years, however, on this point it must be recalled that the requirements to prove acquired distinctiveness through use pursuant to Article 7(3) EUTMR are not the same as those to prove genuine use pursuant to Article 47(2) EUTMR. Whilst under Article 7(3) EUTMR it is necessary to prove qualified use, such that the relevant public perceives as distinctive a sign that per se is devoid of distinctive character, the reason behind the proof of genuine use is completely different, namely to restrict the number of trade marks registered and protected, and consequently the number of conflicts between them. The overall assessment of all the evidence cannot support the finding that the relevant public has come to see the sign as identifying the goods and services claimed in the EUTM application as originating from a particular undertaking.

Based on all of the above, it must be held that the evidence submitted by the applicant does not make it possible to establish that the mark applied for had acquired distinctive character in the relevant territory through use, within the meaning of Article 7(3) EUTMR, at the time when the application for registration was filed.

Conclusion

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the reasons mentioned above in this decision, and pursuant to Article 7(1)(b), (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 939 207 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.

Sandra KASPERIŪNAITĖ