Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/07/2019

MEWBURN ELLIS LLP

Theresienhof

Theresienstraße 1

Munich

80333

ALEMANIA

Application No:	018023911
Your reference:	7455371
Trade mark:	COBALT PRO
Mark type:	Word mark
Applicant:	I-CON Systems, Inc. 3100 Camp Road Oviedo 32765 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 05/03/2019 pursuant to Article 7(1)(b) and 7(1)(c) and Article 7(2) EUTMR because it found that the trade mark applied for is partially descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 08/05/2019, which may be summarised as follows.

1. The goods in Class 11 for which an objection has been raised target professional circles only, namely those in the sanitary sector. Both the valve bodies and the integrated controls for plumbing fittings are usually metallic or plastic. If they are metallic they normally consist either of brass, bronze, gunmetal, cast iron, steel, alloy steels or stainless steels. However, they do not contain the chemical element cobalt and the targeted trade circles of the sanitary sector are also aware of this. The applicant’s valves and integrated controls are made of brass and sometimes plated with chrome.

Moreover, the second verbal element ‘PRO’ contained in the EUTM does not contain a clear and unambiguous indication with regard to the goods for which an objection has been raised. In addition to meaning professional, the term ‘PRO’ can have many different meanings.

2. The relevant professional public will therefore understand the mark applied for with regard to the goods for which an objection has been raised as a fanciful word referring to the applicant and thus as an indication of origin.

3. The Office registered several trade marks consisting of or containing either the word/term ‘cobalt’ or ‘pro’ (in the latter case for similar goods) in the past.

4. The respective US trade mark application has been found registrable by the USPTO.

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 that 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).

Furthermore, ‘[t]he 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 regards word marks, such as the sign at issue, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the mark as a whole (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, it creates an overall impression that is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word combination is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87). Furthermore, according to Article 7(1)(c) EUTMR, to reject a trade mark application it is not necessary for the words to be used in their descriptive sense in trade. It is sufficient if they are capable of being used descriptively.

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR 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 those signs and indications could be used for such purposes (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks that are devoid of distinctive character, which alone renders them capable of fulfilling that essential function (e.g. 16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditional on a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

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 publics 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).

Article 7(2) EUTMR states that paragraph 7(1) will apply notwithstanding that the grounds for preventing registration were obtained in only part of the European Union.

As regards the applicant’s observations, the Office replies as follows.

In its submissions, the applicant argues that the goods in Class 11 for which an objection has been raised direct to expert circles only, namely to those in the sanitary sector. Both the valve bodies and the integrated controls for plumbing fittings are usually metallic or plastic. If they are metallic, they normally consist either of brass, bronze, gunmetal, cast iron, steel, alloy steels or stainless steels. However, they do not contain the chemical element cobalt and the targeted trade circles of the sanitary sector are also aware of this. The applicant’s valves and integrated controls are made of brass and sometimes plated with chrome. Moreover, the second verbal element ‘PRO’ contained in the EUTM does not contain a clear and unambiguous indication with regard to the goods for which an objection has been raised. In addition to its meaning professional, the term ‘pro’ can have many different meanings.

The Office has noted the applicant’s submissions. However, when assessing a mark, the Office must consider it not in its strictest grammatical sense, but as it would be perceived by the public at large, who will interpret it in relation to the goods and services for which registration is being sought and will form an opinion of what it means.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the marks individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

The applicant does not dispute the meaning of the word ‘cobalt’ but argues that the term ‘pro’ can have many different meanings and that the mark as whole with regard to the goods for which protection is sought will be understood as fanciful by the relevant public and, therefore, is distinctive.

The Office respectfully disagrees with the applicant’s arguments.

The fact that the sign at issue can have several meanings, be a play on words or be perceived as surprising and unexpected does not suffice to make it distinctive. Those various elements only make that sign distinctive insofar 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).

As regards the verbal element ‘PRO’ it is sufficient to observe that, according to case-law, first, it may be laudatory for the sake of advertising, the purpose of which is to highlight the positive qualities of the goods or services for the presentation of which that element is used; secondly, it is commonly used in trade for the presentation of all kinds of goods and services. The European Unions judicature has already held that that verbal element would be perceived by the English-speaking public as meaning professional or favourable, positive or supportive. In light of the foregoing, the verbal element ‘PRO’ could be perceived as meaning professional or favourable (24/11/2016, T‑349/15, P PRO PLAYER (fig.) / P PROTECTIVE (fig.) et al.,EU:T:2016:677, § 38).

Furthermore, the Office asserts that it is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

In addition, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case, as stated in the Office’s arguments above.

As can be seen from an ordinary search on the internet, even if cobalt is not a typical metal used in production of the valves, it is often a base material used together with chromium in production of coatings used in valves made of steel to increase their heat and wear resistance. It is applied to the valve face to protect against oxidation and corrosion and it may also be used on the stem tip for added wear resistance. In addition, cobalt-chromium is a very popular material for hard valve trim in applications requiring resistance to sliding wear, erosion and/or cavitation and it is even successfully used in applications that are somewhat corrosive.

It follows that the Office upholds its view communicated in its initial notification of 05/03/2019, that the expression ‘COBALT PRO’ immediately informs consumers without further reflection about the kind and quality of the goods in question, namely that the respective valves and integrated controls claimed in Class 11 that have the purpose of controlling the amount of water to be used, are made of or contain cobalt of a professional quality and meet the high standards of the industry.

In addition, the Office is of the opinion that when taken as a whole, the sign ‘COBALT PRO’ is essentially a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as promotional or advertising information indicating to the consumer the positive aspects of the goods concerned, and as such, a characteristic of the goods related to their market value.

As stated in the initial notification, the sign at issue is a promotional laudatory message, the function of which is to communicate a customer service and value statement. The term transmits the message that the contested goods for which the registration is sought are made of or contain cobalt of a professional quality and meet the high standards of the industry. It is considered highly improbable that the relevant public would fail to grasp the sign’s promotional laudatory message.

Moreover, there is nothing about the sign at issue, beyond its obvious promotional meaning, that might enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. Taking into account that the goods for which an objection has been raised are valves and integrated controls for the purpose of controlling the amount of water to be used, the sign at issue will be simply understood as a promotional laudatory message indicating a characteristic of the applicant’s goods. There is nothing about the sign applied for that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

As regards the applicant's argument that the relevant professional public will therefore understand the mark applied for with regard to the goods for which an objection has been raised as a fanciful word referring to the applicant and thus as an indication of origin, the Office has noted the applicant’s comments.

However, and in line with the Office’s arguments above, the Office believes that even though the goods concerned belong to a specialised market sector and the relevant public are professionals in the sanitary sector, they will understand the expression ‘COBALT PRO’ without difficulty and will perceive the mark as a whole as descriptive rather than an indication of trade origin in relation to the goods for which registration is sought.

The Office considers that the high level of attention alone does not establish that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a really striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of indications on goods they are confronted with and will perceive the term ‘COBALT PRO’ only as a meaningful term referring to the kind and quality of the contested goods for which protection is sought and conveying a laudatory statement.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

It is, therefore, the Office’s view that the expression ‘COBALT PRO’ will be readily understood in conjunction with the contested goods for which protection is sought by the relevant consumer. Given that the mark has a clear descriptive meaning in relation to the contested goods for which registration is sought, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Further in its submissions, the Office registered several trade marks consisting of or containing either the word ‘cobalt’ or ‘pro’ (in the latter case for similar goods) in the past.

The Office has noted the applicant’s comments. However, the above findings do not contradict the relevant case-law. Neither can the applicant successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances that led to the acceptance of these marks cannot be the subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The marks mentioned, namely EUTM registrations No 10 776 466 ‘Cobalt Led’, No 11 666 757 ‘COBALT’ and No 44 339 ‘PROFLOW’ apply different concepts. They have little or nothing in common with the mark applied for and have been found to be distinctive in their own right. The marks referred to have no obvious and immediate meaning for the consumer in relation to the respective goods as the sign applied for and as such would provide the viewer with a different impression in relation to the goods in question. The mere fact that they consist of or contain the word/term ‘cobalt’ or ‘pro’ as one of its constituting parts, does not make them evidently similar with the sign applied for nor could it be concluded that the sign at issue, Cobalt Pro, would be distinctive and thus cannot support its registrability.

Furthermore, the Office affirms that 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).

Finally, as regards the applicant’s argument that the respective US trade mark application has been found registrable by the USPTO, the Office has noted the applicant’s submissions.

Nevertheless, as regards the applicant’s argument that the mark at issue was not objected to by the USPTO (US registration No 88124639), according to case-law:

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).

This is clearly applicable to the present case.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign applied for will be perceived by the consumers as pointing to the commercial origin of the contested goods for which protection is sought. For the reasons mentioned above, the sign ‘COBALT PRO’, does not possess any actual distinctive character for the goods for which protection is sought, pursuant to Article 7(1)(b) and 7(1)(c) and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the contested goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense.

The applicant failed to submit observations within the time limit. For the reasons set out in the letter of objection, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 023 911 is hereby rejected for the following goods:

Class 11

Plumbing fittings, namely, valves; integrated controls for plumbing fittings, namely, controls for the purpose of determining the allowable water to be used by valve.

The application will proceed accordingly for the remaining goods, namely:

Class 9

Software for integration with plumbing fittings, namely, valves, including software for evaluating and/or controlling water consumption and usage by a valve or group of valves in a single valve or an integrated multi-valve system and for determining fluid pressures, flush times, and flush volumes for a valve or a group of valves in a single valve or an integrated multi-valve system.

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.

Robert KLECUN