Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 21/10/2019

CSY London

10 Fetter Lane

London GB_LND EC4A 1BR

REINO UNIDO

Application No:	018037600
Your reference:	CB/LW/72026EM1
Trade mark:	ALWAYS ON
Mark type:	Word mark
Applicant:	CUMMINS INC. 500 Jackson Street Columbus, Indiana 47201 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/04/2019 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 21/08/2019, which may be summarised as follows.

1. The goods for which protection is sought in Classes 7 and 12 only target technical professionals. Therefore, these are the average consumers. The level of attention displayed by the average consumer in the context of these goods will be, necessarily, higher than average. The goods in question are expensive, highly specialised and technical, and the average consumer will take a great deal of care in the purchasing decision. The average consumer is knowledgeable and sophisticated and would be well aware of the nature of the goods listed in Classes 7 and 12. They would know that the goods listed are not always available and operating at all times and would not regard ‘ALWAYS ON’ as descriptive of these goods.

2. ‘ALWAYS ON’ is not used in common English parlance to describe something that is constantly available.

3. ‘ALWAYS ON’ would not provide the relevant consumer with information that certain goods are always active, operating and available at all times. It is not true that the goods are always active and operating at all times. For example, machines and machine tools for removing waste materials and motors for such machines are not always active and operating. Furthermore, there is no reason for these goods to be active and operating at all times, so describing them as such is nonsensical. A machine, motor or vehicle is not, in itself, powered (they require some sort of energy supply), so to describe them as such does not make sense. The fact that a degree of mental gymnastics is required to arrive at the descriptive significance proposed by the Office, renders any descriptive significance indirect.

4. The "filters for motors and engines; anti-pollution devices for motors and engines; canisters and housing for all the foregoing filters; filters for the reductions of emissions from exhaust and the reduction of noise for use with engines; ...parts of machines, namely, ...anti-friction bearings for machines, anti-friction pads for machines, machine aprons, axles for machines, ball rings for bearings, ball-bearings, bearing brackets for machines, bearings for transmission shafts, engine bearings; machine parts, namely, bearings and bushings, roller bearings, bearing housings and bearing inserts; engine parts, namely, fan belts for motors and engines, belt conveyors, belts for conveyors, belts for machines, belts for motors and engines; cartridges for filtering machines;... connecting rods for machines, motors and engines; ... crank shafts; crankcases for machines, motors and engines; cranks; cylinder heads for engines; cylinders for motors and engines; pistons; pistons for cylinders; exhausts for motors and engines; ..., other than for land vehicles; housings for machines;... joints for engines; ...mufflers for motors and engines;... piston rings; sealing joints for engines; machine shaft couplings; silencers for motors and engines;... torque converters other than for land vehicles; transmission chains other than for land vehicles; transmission shafts, other than for land vehicles;... valves for machines; ... engine parts for vehicles, namely, camshafts, fuel nozzles,... crankcases, crankcase breathers, exhaust manifolds, exhaust silencers, machine tools in the nature of metal spring tensioning bars for providing and maintaining tension between two engine components; fuel economizers for motors and engines, lubricating pumps and oil refining machines, namely, oil separators; replacement parts for the aforesaid goods included in this class" in Class 7 and  "driving chains for land vehicles; couplings and belting for land vehicles, namely, trailer couplings, drive belts, belts for vehicle transmissions; replacement parts for the aforesaid goods" in Class 12, do not turn on and cannot be powered on; they cannot therefore be described as ‘always on’. The Office has issued a blanket objection without careful consideration as to the applicability of the objection to each good in the specification. If a careful and itemised analysis is conducted, it is clear that the objection has not been correctly raised.

Consumers would need to perform certain mental steps and make certain assumptions to reach the conclusion proposed by the examiner, and for this reason the mark is outside the scope of Article 7(1)(c) EUTMR.

Although each of the two component words which make up the mark are English words, their juxtaposition creates a mark that, as a whole, is not a familiar expression in English with respect to the goods for which protection is sought in Classes 7 and 12. An indirect or vague allusion of a trade mark to the goods in question, or a degree of suggestiveness between the mark and the goods is not sufficient to justify the refusal of registration.

Since ‘ALWAYS ON’ is not directly descriptive of the goods applied for, this mark certainly has the capacity to distinguish the applicant’s goods from the goods of other undertakings and is therefore not devoid of distinctive character.

5. The Office has registered marks that contain the word ‘ALWAYS’ (e.g. EUTM No 12 108 817 ‘ALWAYSON’; EUTM No 17 585 613 ‘Always at your site’; EUTM No 16 420 564 ‘always warm’; EUTM No 16 262 743 ‘ALWAYS MY FIT’; EUTM No 14 991 681 ‘Always-on Duplex Display’; EUTM No 13 231 626 ‘alwaysdata’; EUTM No 11 167 277 ‘ALWAYS DISCREET’; EUTM No 10 042 265 ‘ALWAYS SUPPORTS’; EUTM No 9 890 245 ‘ALWAYS DAILIES’; EUTM No 9 456 451 ‘ALWAYS PROFRESH’; EUTM No 9 323 098 ‘ALWAYS-ON RELATIONSHIPS’; EUTM No 8 844 458 ‘ALWAYS ACTIVE’; EUTM No 8 120 156 ‘Always Brite’; EUTM No 6 333 851 ‘ALWAYS ON TARGET’; EUTM No 3 557 733 ‘ALWAYS LISTENING’). Each of the marks mentioned above has been deemed distinctive on a prima facie basis by the Office.

5. The mark ‘ALWAYS ON’ is already in use. In excess of USD 29 500 has been spent in advertising ‘ALWAYS ON’ to its sophisticated customer base, including customers in the UK and EU. 7 annexes (brochures and photographs) have been submitted to show how the mark has been used.

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 services, or other characteristics of the goods or services, shall not be registered.

Pursuant to Article 7(2) EUTMR, a trade mark shall not be registered even if the grounds of non-registrability are met only in part of the European Union.

The rationale behind the provision of Article 7(1)(c) EUTMR is the general underlying public interest, in securing that descriptive signs or indications relating to the goods and services in respect of which registration is sought may be freely used, by preventing such signs and indications from being subject to exclusive rights as trade marks (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 35-36; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 27; 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 25).

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 services in respect of which registration is sought (29/04/2004, C-468/01 P – C- 472/01 P, Tabs, EU:C:2004:259, § 39; 26/11/2003, T-222/02, Robotunits, EU:T:2003:315, § 34; 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 24).

The examination of applications for registration must not be minimal, but must be stringent and full in order to prevent trade marks from being improperly registered and to make sure that, for reasons of legal certainty and sound administration, trade marks whose use could be successfully challenged before the courts are not registered (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59).

Furthermore, for a sign to be rejected as descriptive, there must be a sufficiently direct and specific link or relationship between the sign and the goods and services in question to enable the public concerned to immediately perceive, without further reflection, a description of the goods and services in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40).

In this regard, it must be stated that the legislature’s choice of the word ‘characteristic’ stresses that the signs referred to in that provision are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or services in respect of which registration is sought. Therefore, a sign may only be refused registration on the basis of Article 7(1)(c) EUTMR if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (11/03/2011, C-51/10, 1000, EU:C:2011:139, § 50 and the caselaw cited therein; 27/04/2016, T-89/15, Niagara, EU:T:2016:244, § 14).

However, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive but it is sufficient that the sign could be used for such purposes for it to be caught by the absolute ground for refusal laid down in Article 7(1)(c) EUTMR (18/01/2018, T-804/16, Dual Edge, EU:T:2018:8, § 20, 37 and the case-law cited therein).

Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and services (27/06/2017, T-327/16, ANTICO CASALE, EU:T:2017:439, § 28 and the case-law cited therein).

For the application of Article 7(1)(c) EUTMR it is not decisive whether or not the mark refers to characteristics which are commercially essential or merely ancillary (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 102).

A word sign must be refused registration if at least one of its potential meanings designates a characteristic of the goods or services concerned (17/01/2019, T-40/18, SOLIDPOWER, EU:T:2019:18, § 37 and the case-law cited therein).

It is settled case-law that the distinctive character of a trade mark must be assessed by taking into account, first, the products or services in respect of which registration has been applied for and, second, the perception on the part of the relevant public (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; 29/04/2004, C-473/01 P and C-474/01 P, Tabs, EU:C:2004:260, § 33).

The Office replies to the applicant’s arguments as follows.

1. The Office considers that the goods against which an objection has been raised, despite their technical character, target both average consumers and a professional public. The level of attention of professionals is, in principle, high. However, this does not imply that this public will be more inclined to consider a mark as being distinctive or non-descriptive than the public at large with a normal degree of attention and awareness. In fact, it may very well be the contrary. Terms which are not (fully) understood by the public at large with an average awareness, can be grasped immediately by a more attentive and circumspect public, in particular if the sign is composed of words which relate to the field in which the latter public is active (11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27-28).

2. Since the sign is comprised of English words, for the purpose of assessing its inherent distinctiveness, the Office considers that it should be analysed taking into account the perception of the English-speaking consumer in the EU, namely the relevant public in the territories where English is spoken (Ireland, Malta and the UK).

According to the dictionary definition, ‘ALWAYS ON’ means ‘remaining available at all times; available or operating at all times’. In relation to the goods for which the objection has been raised, the mark immediately informs the English-speaking consumer, without the need for further reflection, that part of the goods in Class 7 (as listed in the notice of grounds for refusal) are machines that are always active, operating, available at all times / when needed and that the remaining goods in Class 7 and the goods in Class 12 are goods that allow machines, engines, motors or vehicles to be available, operating, or powered when needed. Contrary to the applicant’s claim, no analysis or mental leap is required to ascertain the possible meaning of the expression.

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).

4. Although the decision to refuse registration of a trade mark must, as a rule, state the reasons for each of the goods or services concerned, the competent authority may nonetheless limit itself to using general reasoning where the same ground for refusal is given for a category or group of goods or services that have a sufficiently direct and specific link to each other, to the extent that they form a sufficiently homogeneous category or group of goods or services.

The application covers machines that could be ‘always active, operating, available at all times and when needed’ and the remaining goods will allow machines, engines, motors or vehicles to be available / operating / powered when needed. Consequently, all these goods have sufficiently direct and specific links to each other to the extent that they form a sufficiently homogeneous category or group.

Contrary to the applicant’s assertion, the relevant public will, without any effort, grasp the meaning conveyed by the sign as referring to goods that are ‘permanently activated’; that can be kept in continual use; that have the capacity to continually and/or repeatedly function and/or operate; or that will enable this feature. The sign will, therefore, be perceived as a descriptive expression for the contested goods, by referring to their quality and intended purpose. The combination of words forming the expression provides a straightforward and clear message in relation to the goods concerned. There is nothing abstract about the expression ‘Always on’, as its semantic content in relation to the relevant goods is quite obvious.

Consequently, the meaning of the expression ‘Always on’ as a whole, when applied to the contested goods is simply the sum of the individual terms ‘ALWAYS’ and ‘ON’, and it will be perceived with that meaning. Therefore, the mark conveys obvious and direct information regarding the quality and intended purpose of the goods in question. It is confirmed that this reasoning applies to all the goods concerned, and it is not necessary for the Office to provide an explanation for the objection on a good-by-good basis. It is sufficient for the applicant to note that the objection raised, and the reasoning provided in support of the objection, applies equally to all the goods against which the objection has been raised.

The expression applied for consists of the combination of two readily identifiable and ordinary English words, namely ‘ALWAYS’ and ‘ON’. There is nothing unusual about the structure of that sign. The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression in relation to the goods concerned.

Furthermore, the term ‘ALWAYS ON’ is not sufficiently ambiguous or fanciful to require a measure of interpretation, thought or analysis by the relevant consumer. As a result, the message conveyed by the mark is clear, direct and immediate to the relevant public, and in relation to all the goods claimed in Classes 7 and 12, as it is not vague in any way. It does not lend itself to different interpretations, nor is it an allusive fanciful sign in relation to the goods claimed.

In addition, it should be reiterated that 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 the goods in respect of which the application is filed, or of characteristics of those goods. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes.

The relevant public, when seeing the sign, will immediately perceive a meaningful, descriptive indication of essential or important characteristics of the goods at issue. The relevant public will not be likely to identify the goods concerned as originating from a particular undertaking.

Taking all of the above into account and contrary to what the applicant claims, the Office finds that the mark at issue affords a link with the contested goods to such an extent that this nexus is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR.

Furthermore, there is no evidence to suggest that the relevant consumer would be particularly ‘trade mark educated’ or knowledgeable and would instantly perceive ‘Always on’ as a trade mark in relation to the contested goods, rather than a descriptive message in relation to the quality and/or intended purpose of the goods.

A mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case- law cited therein).

A mark which, as in the case at hand, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the marked goods to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and services, thus enabling the consumer who acquired them 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 (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

5. The applicant has made recourse to previous decisions of the Office, but only to a number of acceptances of marks containing the word ‘ALWAYS’.

As regards acceptances of other marks containing the word ‘ALWAYS’, the sole fact that they were accepted for registration cannot overcome the ground for refusal (24/06/2015, T‑553/14, Extra, EU:T:2015:459, § 27, 28; 18/01/2018, T‑804/16, Dual Edge, EU:T:2018:8, § 43; 27/06/2018, T‑362/17, FEEL FREE, EU:T:2018:390, § 50, 51). The legality of this decision must be assessed solely on the basis of the EUTMR, and not on the basis of Office practice in earlier decisions, and an applicant cannot rely, in support of its claim, on more lenient decisions taken by the Office in favour of other trade mark applicants or even the same applicant (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47, 66; 05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 31).

Each case must be examined on its own merits, on the basis of the specific meaning of the word combination concerned and with regard to the specific list of goods and services at issue. There can be no usual practice of acceptance of trade marks with the word element ‘ALWAYS’. Such a practice certainly does not exist and if it existed, it would still be subordinate to the principle of legality which will always prevail (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 66, 67).

If a duly reasoned decision to refuse a particular EUTM application could be changed by reference to other registrations, then the examination of that particular EUTM application would no longer be full and stringent (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 123, 125; 06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59), but would be watered down to the most lenient of the standards applied over time.

In addition, examination standards may well develop over time with more experience leading to the right balance.

However, the Office has also refused similar marks to that in the present case, such as EUTM No 5 651 393, ‘ALWAYS ON’; EUTM No 14 996 037, ‘ALWAYS ON’; EUTM No 15 059 777 ‘always on display’; or EUTM No 14 992 465 ‘always on display’.

6. After carefully analysing the annexes submitted by the applicant, the Office points out that the mark at issue is a word mark containing the expression ‘ALWAYS ON’, whereas the applicant is using the mark, as shown below, alongside other elements, including its commercial name:

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 037 600 ´ALWAYS ON´ 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.

Roxana PISLARU