DECISION

of the First Board of Appeal

of 12 November 2019

In case R 878/2019-1

Exxon Mobil Corporation
5959, Las Colinas Boulevard Irving Texas 75039 United States of America	Applicant / Appellant

represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany

APPEAL relating to European Union trade mark application No 17 957 813

The First Board of Appeal

composed of Th. M. Margellos (Chairperson and Rapporteur), M. Bra (Member) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 17 September 2018, Exxon Mobil Corporation (‘the applicant’) sought to register the figurative mark

for the following list of goods and services, as amended on 21 November 2018:

Class 1 - Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science; transmission fluids;

Class 4 - Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; lubricating oils; greases; motor oils; gear lubricants; synthetic engine lubricants;

Class 37 - Building construction; repair and installation services relating to vehicles; vehicle lubrication services.

2. On 16 October 2018, the examiner provisionally refused the trade mark application pursuant to Article 7(1)(b) and (c) EUTMR. The examiner found that the sign described certain characteristics of the goods and services for which protection was sought, being also devoid of any distinctive character. As per the objection of descriptiveness, applicable to all goods and services, the examiner considered that relevant consumers would perceive the sign as providing information that the goods and services are the best, number one, the first of many, notwithstanding the figurative element consisting of a number in white colour on a black background. Such objection was also supported by three Collins Dictionary references on the words ‘one’, ‘first’ and ‘number one’. Therefore, in the examiner’s view the mark applied for fell within the scope of the prohibition in Article 7(1)(c) EUTMR. The examiner also found the sign objectionable under Article 7(1)(b) EUTMR because it had a clear descriptive meaning, given that it was incapable of performing the essential function of a trade mark. The examiner added that although the sign for which protection was sought contained a certain figurative element, the nature of this element was so negligible that it did not endow the mark as a whole with any distinctive character.

3. On 30 November 2018, the applicant maintained its request for registration notwithstanding the objections raised by the examiner arguing as follows:

• The examiner did not conduct a complete assessment for the purposes of registrability of the mark, as he neglected to include a definition of ‘relevant consumer’ and of the ‘average consumer’ and he did not refer to the particular goods and services for which registration was sought, the circumstance of which is necessary in order to establish the average consumer’s level of attention.

• The trade mark applied for does not have a direct and concrete link with the goods and services applied for and therefore it cannot be refused under Article 7(1)(c) EUTMR, as established by the case-law (05/02/2004, C‑150/02 P, Streamserve, EU:C:2004:75 and 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246). Furthermore, the examiner failed to explain the existence of a direct and concrete link between the mark and the goods and services for which registration is sought, as provided by the Guidelines on absolute grounds for refusal.

• The trade mark applied for cannot be deemed exclusively descriptive given that the relevant consumer is not immediately aware of what the designated goods and services are to be used for, as stated by the case-law (19/04/2007, C‑273/05 P, Celltech, EU:C:2007:224).

• The examiner used as a reference point for his objections only the definitions of the words ‘one’, ‘first’ and ‘number one’ extracted from the Collins English Dictionary. In particular, the examiner based his decision on the definitions of ‘first’ and ‘number one’, which are not relevant, given that those who speak English and any other consumers in the European Union would not understand the message of the sign immediately as ‘the best’, ‘number one’, ‘the first of many’ without several mental leaps.

• The examiner in his evaluation wrongly did not take into account the immediate visual impression of the mark as filed.

• The EUIPO Guidelines on absolute grounds for refusal provide that trade marks consisting of numerals alone (i.e. with no graphic additions) are capable of registration. The trade mark as applied for also has an additional graphic element, therefore, there is no reason why it should be refused.

• The examiner did not explain the link between the mark at issue and the particular goods and services covered by the application.

• The examiner arrived at the conclusion that the mark was devoid of any distinctive character based solely on a finding that the sign had a clear descriptive meaning, a circumstance that is not sufficient in order to refuse the registration of the trade mark as applied for under Article 7(1)(b) EUTMR.

• There are several trade marks that include the number ‘1’ in different classes accepted by the Office. This occurrence serves to highlight the threshold of distinctiveness for the purposes of the registrability assessment and it proves the registrability of the sign applied for.

4. Further, the applicant requested that it be allowed to rely on the secondary claim of acquired distinctive character through the use having been made of the mark applied for throughout the European Union prior to the filing of the application, should the foregoing e arguments be rejected.

5. By decision of 21 February 2019, (‘the contested decision’) the examiner refused the trade mark applied for, in its entirety pursuant to Article 7(1)(b) and (c) EUTMR. The decision was based on the following main findings:

• As regards the argument that the examiner did not conduct a complete assessment for the purposes of registrability of the mark, particularly on the alleged lack of definition of ‘relevant consumer’ and of the ‘average consumer’, the provisional decision specified that relevant English-speaking consumer, but also any other consumer in the European Union, would understand the sign as a single number having a clear meaning, given that any consumer in any country using the Arabic numerals knows that the number ‘1’ is used in order to claim some primacy, superiority and exclusiveness.

• Regarding descriptiveness, according to the examiner the sign has direct and concrete meaning for any goods and services and not only for the ones claimed by the applicant. The opinion of the applicant that several mental leaps were taken in order to conclude that the mark is descriptive is not shared; any consumer in the European Union would understand the message of the sign and this would happen immediately.

• The interpretation of the sign as being equivalent to ‘first’ or ‘number one’ conveys a clear message for any European Union customer, as proven also by some examples of dictionary references in other European Union languages.

• With reference to the fact that the examiner ignored the immediate visual impression of the sign, as already stated in the decision [provisional refusal] dated 16 October 2018, it is exactly the immediate visual impression of the sign as filed that evokes the descriptiveness of the same, since the sign consists of the numeral ‘1’, presented without any stylisation on a black background in the form of a square, also without any stylisation or figurative elements.

• With reference to the failure of the examiner to explain why the sign is descriptive for every one of the goods and services indicated by the applicant one by one, the following is to be considered: as for the goods in Class 1, they are one of a kind, better than anything else of its kind, the first of the that kind – they are number 1; as for the goods in Class 4, they are one of that kind, better than anything else of its kind, the first of the that kind – they are number 1; as for the services in Class 37, they are one of that kind, better than anything else of its kind, the first of the that kind – they are number 1.

• As regards distinctiveness, since the sign has a clear descriptive meaning as only providing information that the goods and services are ‘the best’, ‘number one’, ‘the first of many’, in combination with the graphical representation of the sign (the simple number ‘1’ on a black background in the shape of a square), the sign is devoid of any distinctive character.

• Regarding the applicant’s argument that a number of similar registrations have been accepted by the Office, according to settled case-law 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‑37/03P, BioID, EU:C:2005:547, § 47 and 09/10/2002, T-36/01, Glass Pattern, EU:T:2002:245, § 35).

6. On 18 April 2019, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 19 June 2019.

Grounds of appeal

7. The arguments raised in the statement of grounds may be summarised as follows:

• The contested decision does not address or acknowledge several interpretations of numeral ‘1’. The latter can be interpreted, in fact, as: part of the binary code used in computers for representing data; the resin identification code (used for the purpose of recycling materials) for polyethylene terephthalate; the state of an electronic device being ‘on’; the word ‘one’ can be used in the form of a noun, adjective or pronoun. In light of the above, it cannot be stated that the trade mark applied for describes goods which are ‘the best, number one, the first of many’.

• The fact that the numeral is depicted in a particular stylisation, surrounded by a figurative black square cannot give rise to the descriptiveness objection, given that it is the mark as a whole for which registration is sought, not the numeral alone.

• The fact that the mark applied for has no descriptive meaning and therefore a consumer would not draw the same conclusions as the examiner, are also confirmed by some decisions of the Opposition Division and of the Boards of Appeal. In particular, the fact that the examiner acknowledged a clear descriptive meaning of the sign in relation to the goods and services applied for without any mental leaps is challenged by an Opposition Division’s decision (07/09/2015, B 2 360 454) which concluded that a mark containing the numeral ‘1’ and/or the word ‘one’ is not descriptive but is allusive. Further, the same decision reported that the Boards of Appeal, in two applicable cases stated that ‘according to case-law, a numeral is distinctive so long as it is not perceived by relevant public as describing a characteristic of the product or service’ (17/01/2013, R 76/2012-1, MY ONE HOTEL; 07/06/2012, R 498/2011-1, MOH MY ONE HOTEL AND RESORTS). Furthermore, in the Opposition Division’s decision mentioned above (23/07/2010, B 1 552 515) it was stated that ‘numbers do not convey a conceptual meaning’, thus there can be no direct and concrete link between the mark and the goods and services applied for (05/02/2004, C‑150/02 P, Streamserve, EU:C:2004:75 and 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246).

• Further, it is clear from the case-law that marks composed exclusively of numerals with no graphic modifications can be registered as trade marks (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 29-30). The mark applied for even contains a stylised digit within a black box and therefore there are no reasons to reject it.

• With reference to the objection under Article 7(1)(b) EUTMR, given that the mark consists of a sign which does not indicate a quality of the goods and services for which registration is sought, there is no clear meaning to be attributed to the mark by the relevant consumer and therefore the sign has not a clear descriptive meaning.

• Some decisions of the Opposition Division prove that the Office has found that consumers are capable of attributing distinctiveness to marks containing the numeral ‘1’ (23/07/2010, B 1 552 515) based on the fact that considering the low distinctiveness of the numeral ‘1’ consumers will not be impressed by that element and will be more likely to concentrate on the way in which it is written or on the existence of surrounding elements or the overall design of the marks.

8. Further, the applicant requested that it be allowed to rely on the secondary claim of acquired distinctive character through the use of the mark applied for throughout the European Union prior to the filing of the application, should the foregoing arguments be rejected.

Reasons

9. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

10. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. Therefore, it is admissible.

11. However, the appeal must be dismissed for the following reasons.

Article 7(1)(c) EUTMR

12. Article 7(1)(c) EUTMR provides that signs shall not be registered as EU trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, 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 services.

13. According to case-law, Article 7(1)(c) EUTMR prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

14. Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or service designated by the mark 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 (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 28)

15. For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immediately, without further thought, a description of the goods or services in question or one of their characteristics (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

16. Therefore, the trade mark may only be assessed, first, in relation to the understanding of the mark by relevant public and, second, in relation to the goods or services concerned (30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26; 27/02/2002, T-34/00, Eurocool, EU:T:2002:41, § 38).

17. The goods and services that are the subject of the present appeal are:

Class 1 - Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science; transmission fluids;

Class 4 - Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; lubricating oils; greases; motor oils; gear lubricants; synthetic engine lubricants;

Class 37 - Building construction; repair and installation services relating to vehicles; vehicle lubrication services.

18. In the present case, the trade mark applied for is a figurative trade mark consisting of the numeral ‘1’ represented in white, on a black square background. It is evident that the numerical element of the sign is made of an Arabic numeral, understood and used as such in all the reference languages. Therefore, the Board finds that the relevant public can be found, as correctly stated by the examiner, in any consumer throughout the territory of the European Union.

19. Contrary to what the applicant stated, the numeral ‘1’ conveys a conceptual meaning. The number ‘1’ is often used to symbolise the beginning of something; ‘No. 1’ is generally the first item in a ranking list – this generally refers to the best performer within a ranking; when assessing performance at school, in some countries of the European Union, e.g. in Germany and Austria, teachers give their students a ‘1’ as the highest and best mark.

20. In light of the above, as correctly stated by the examiner, the message that is related to the numeral ‘1’ is, without any mental steps, ‘the best, number one, the first of many’.

21. As to the interpretations of the numeral ‘1’ cited by the applicant (part of the binary code used in computers for representing data; the resin identification code (used for the purpose of recycling materials) for polyethylene terephthalate; the state of an electronic device being ‘on’; the word ‘one’ can be used in the form of a noun, adjective or pronoun), the Board considers such interpretations not decisive in order to prove the non-descriptiveness of the mark. According to the case-law, in fact, in order to establish descriptiveness it is sufficient that only one of the possible meanings of the trade mark designates a characteristic of the goods or services concerned (04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 30-31; 20/03/2003, T-355/00, Tele Aid, EU:T:2002:79, § 30; 23/10/2003, C-191/01 P, Doublemint, EU:T:2003:579, § 32; 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 38).

22. With reference to the link between the numeral and the goods and services being the subject of the present appeal, the Board considers that there is a direct link. In line with the contested decision, in the Board’s view, for at least a significant part of the target public, the link is obviously clear and direct to draw the conclusion, without particular or extended reflection, that the sign provides information about the characteristics of the goods and services under appeal, namely that the contested ‘chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science; transmission fluids’ in Class 1; ‘industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; lubricating oils; greases; motor oils; gear lubricants; synthetic engine lubricants’ in Class 4 and ‘building construction; repair and installation services relating to vehicles; vehicle lubrication services’ in Class 37 are ‘one of that kind’, ‘better than anything else of its kind’, ‘the first of the that kind’, ‘number 1’.

23. Thus, contrary to the applicant’s allegation, the mark can be linked to features that correspond to the characteristics of the goods and services as applied for and the consumer will not be obliged to go through a number of stages before appreciating the descriptive meaning of the number ‘1’ in view of the goods and services in question.

24. As regards the graphic representation of the sign, it is noted that the number ‘1’ is written in white on a simple black square as a background. The Board considers that the sign’s figurative elements are of such a simple nature, that contrary to what the applicant stated, they do not affect the aforementioned assessment of the numeral element (12/05/2016, T-32/15, MARK1 (fig.), EU:T:2016:287, § 43). According to the case-law, in fact, the decisive question is whether from the perspective of the consumer, the figurative elements change the meaning of the mark for the goods and services at issue, which is not the case.

25. The Board finds the applicant’s argument according to which the case-law provides that even marks composed exclusively of numerals with no graphic modifications can be registered irrelevant.

26. On the decisions of the Opposition Division and of the Boards of Appeal mentioned by the applicant, it is sufficient to state that, firstly, the Boards of Appeal cannot be bound in any way by the decisions adopted by the examiners. In particular, it would be contrary to the Boards of Appeal’s purpose for its jurisdiction to be restricted by the requirement to respect the decisions of the first-instance adjudicating bodies of EUIPO (28/06/2017, T-479/16, AROMASENSATIONS (fig.), EU:T:2017:441, § 42; 09/11/2016, T-290/15, SMARTER TRAVEL (fig.), EU:T:2016:651, § 73 and the case-law cited therein). Furthermore, according to established case-law, the legality of the Office’s decisions must be assessed solely on the basis of the EU legislation, not on the basis of an earlier decision-making practice. It must also be pointed out that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67; 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76-77; 12/02/2009, C-39/08 & C-43/08, Volks.Handy, EU:C:2009:91, § 18; 27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

27. In light of the foregoing, the Board agrees with the examiner that there exists a sufficiently direct and specific relationship, from the point of view of the relevant public, between the mark and the goods and services in the application. Indeed, the sign ‘ ’, as a whole, immediately informs consumers without further reflection that the goods and services applied for are ‘the best’, ‘number one’, ‘the first of many’.

28. Therefore, the examiner rightly refused the application for those goods and services pursuant to Article 7(1)(c) EUTMR.

Article 7(1)(b) EUTMR

29. Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character shall not be registered. The marks referred to in this provision are those which are regarded as incapable of performing the essential function of a trade mark namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (20/05/2009, T-405/07 and T-406/07, P@YWEB CARD/PAYWEB CARD, EU:T:2009:164, § 33; 21/01/2011, T-310/08, executive edition, EU:T:2011:16, § 23).

30. According to settled case-law, the assessment pursuant to Article 7(1)(b) EUTMR should not be carried out in the abstract, but should be assessed instead by reference to the perception of the sign by the relevant public to which the claimed goods and services are directed (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 43).

31. The notion of general interest underlying Article 7(1)(b) EUTMR is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the product or service from others which have another origin (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 56 and 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).

32. With reference to the case at issue, as has been discussed, the sign ‘ ’ conveys a direct link with the goods and services as applied for. It is just an ordinary message extoling the desirable characteristics of the applicant’s goods and services and therefore possesses no particular resonance. There is nothing in the sign applied for that might enable the relevant public, which is both the general public and specialists, to memorise it easily and instantly as a source of commercial origin of the goods and services at issue, distinguishing the goods offered by the applicant from those of a different commercial origin (09/07/2008, T‑70/06, Vorsprung durch Technik, EU:T:2008:266, § 44-45 and 56-59).

33. The mark consists primarily of a number that any person in the European Union would understand immediately and it would not trigger, in the minds of relevant public, a cognitive process or require an interpretative effort on their part to constitute anything more than a mere promotional message extolling the qualities of the goods and services covered by the trade mark application. Therefore, the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond mere promotional information.

34. The mark has a laudatory and promotional connotation, attributing the goods and services an indication of their quality and therefore of their market value. The sign suggests to the consumers that the goods and services are ‘the first’, ‘the best’, ‘number one’ among the same goods and services available on the market. The products considered to be ‘the best’ always occupy first place on a ranking list, and so this is an indication of the high quality of the products or the great popularity of the goods (02/10/2014, R 648/2014-1, Mark1). It must be noted that according to the case-law, laudatory expressions and messages regarding a positive quality are devoid of any distinctive character (22/03/2018, T-235/17, Mobile living made easy, § 49-50; 22/10/2015, T-431/14, Choice, EU:T:2015:793, § 28-30; 23/09/2009, T-396/07, Unique, EU:T:2009:353, § 22; 12/05/2016, T-32/15, MARK1 (fig.), EU:T:2016:287, §§ 40-42).

35. With reference to the figurative element of the mark, the Board agrees with the examiner that the graphic and colour design of the sign are not sufficient to establish distinctive character of the application, the sign being composed of the number ‘1’ written in white in a regular font, on a regular black background, with no other surrounding elements. These elements possess no feature as would allow the mark to fulfil its essential function in relation to the goods and services covered by the application for registration.

36. According to the applicant, marks containing the numeral ‘1’ can be capable of attributing distinctiveness even if the number ‘1’ can be considered having a low distinctiveness, as stated in some decisions of the Opposition Division. In particular, the applicant reported that the Office previously stated that considering the low distinctiveness of the numeral ‘1’, consumers will not be impressed by that element and will be more likely to concentrate on the way in which it is written or on the existence of surrounding elements or the overall design of the marks. Firstly, as already mentioned, it must be noted that the Boards of Appeal cannot be bound in any way by decisions adopted by examiners (see § 26 above). Secondly, the Board considers that, in the case at issue, even if consumers were to concentrate on the way in which the numeral ‘1’ is written and not on the numeral itself, they will not be able to memorize it easily and instantly as a source of commercial origin of the goods and services. Thus, the mark must be considered, once again, devoid of any distinctive character.

37. In light of the foregoing, the Board considers that the mark applied for does not allow consumers to distinguish the commercial origin of the goods and services at issue, and is thus devoid of any distinctive character.

38. Therefore, the examiner rightly refused the application for those goods and services pursuant to Article 7(1)(b) EUTMR.

Conclusion

39. In light of the above considerations, the trade mark applied for is descriptive and lacks distinctive character within the meaning of Article 7(1)(b) and (c) EUTMR for all the goods and services applied for.

40. As to the applicant’s request that it be allowed to rely on acquired distinctiveness should its arguments under Article 7(1)(b) and (c) EUTMR not be accepted, the Board notes that the onus is on the applicant to provide all the relevant facts, evidence and arguments in support of its claim that the mark applied for is eligible for registrations, notwithstanding the examiner’s objections, including on acquired distinctiveness. The applicant, however, has filed no evidence of acquired distinctiveness.

41. The application is rejected and the appeal is dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed Th. M. Margellos

Signed M. Bra

Signed Ph. von Kapff

Registrar: Signed H. Dijkema