Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 29/06/2020

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

REINO UNIDO

Application No:	018041202
Your reference:	IPS3A/T84517EM
Trade mark:
Mark type:	Figurative mark
Applicant:	Vaughan John Hutchinson 175 Surrey Road, RD 8, Tariki Inglewood, Taranaki 4388 NUEVA ZELANDA

The Office raised an objection on 27/04/2019 pursuant to Article 7(1)(e)(ii) and 7(1)(b) EUTMR because it found that the trade mark applied for falls under the grounds for refusal established under Article 7 EUTMR.

The goods to which this objection applies are:

Class 8 Hand-operated tools and implements, namely, hand-operated cutters and cutting tools for wood and kindling; hand-operated tools and implements for splitting wood comprised of stationary axes or fixed blade knives, all with at least one sharpened cutting edge; hand-operated stationary metal device in the nature of a log splitter featuring a sharp wedge used to split wood when force is applied to the wood by another tool forcing it down upon this device; ironmongery, namely, a hand-operated, stationery wood cutter comprised of metal rods, solid metal rings, metal base plates, sharpened wedges of metal, and metal feet, all of cast iron, cast steel, cast stainless steel, and/or cut steel and assembled together.

The applicant submitted its observations on 25/10/2019, which may be summarized as follows:

1. The Office has not identified the essential characteristics of the sign.

2. The Office has not demonstrated that the sign is comprised exclusively of essential characteristics necessary for achieving a technical result. The applicant submits that at least one of the essential characteristics does not perform a technical function as the sculptural fins which are depicted below the blade of the product have no technical function.

3. The sign does depart significantly from the norms and customs in the relevant market sector and the references provided by the EUIPO do not support its decision on the contrary.

4. The applicant encloses extracts of third-party goods having an identical purpose but which do not contain the sculptural fins as in the product of the applicant.

5. The applicant makes a subsidiary claim that the sign has acquired distinctiveness character through use within the meaning of Article 7(3) EUTMR.

After reviewing the applicant’s reply to the notice, the Office decided to maintain the objection for all the goods applied for and sent a further communication dated 08/01/2020.

The Office stated that under Article 7(1)(e) EUTMR, signs which consist exclusively of the shape which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods are not to be registered (see judgment of 6 October 2011, T-508/08, ‘Loudspeaker’, para. 61).

According to the case-law, each of the grounds for refusal to register listed in Article 7(1) EUTMR must be interpreted in the light of the public interest underlying them (see judgment of 14 September 2010, C-48/09 P, ‘Lego brick’, para. 43, with further references).

In that connection, the rules laid down by the legislature reflect the balancing of two considerations, both of which are likely to help establish a healthy and fair system of competition (see judgments of 19 September 2012, T-164/11, ‘Knife handles’, para. 19; and of 14 September 2010, C-48/09 P, ‘Lego brick’, para. 44).

First, the Office noted in the letter of 08/01/2020 that the inclusion in Article 7(1) EUTMR of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions (see judgments of 19 September 2012, T-164/11, ‘Knife handles’, para. 20; and of 14 September 2010, C-48/09 P, ‘Lego brick’, para. 45).

As regards the applicant’s argument that the Office had not identified all essential characteristics of the sign, the Office first of all noted that in the letter of objection 27/04/2019, the Office noted that the mark consists of a black and white drawing of a wood splitter. The Office took a view that by a visual analysis of the drawing, it is possible to conclude that a log will be placed inside the top ring shown in the sign, after which it is possible to hammer the log down on the splitting bar.

For the sake of completeness and insofar as the essential characteristics of the sign are concerned, the Office further clarified that the mark consists of a drawing of a cutting tool that has a circular base and safety guard. The Office noted that the circular base of the tool and the cutting blade as a non-moving part of the tool make cutting easier and safer and may also provide strength to the device. As regards two support poles of the safety ring, these prevent the wood from jamming and getting stuck between the poles and thus provide better results as for examples having three support poles. The sharper the axe blade and the wider the base end, the more easily the tool splits the wood. As regards sculptural fins, the Office noted that according to the applicant’s patent application:

The cutting means may be assisted by the inclusion of secondary cutting means such as, but not limited to a lump, bump, wedge or extrusion that is attached securely to the cutting means, the supporting means or body or base by being welded, screwed, riveted, bolted, cast into the design or otherwise attached securely thereto. This is to aid the splitting action by forcing/splaying the split material further apart. The lump, bump, wedge or extrusion could be of any shape or size but would work best if of equal width or wider than the widest part of the first cutting means. It could be configured to any shape such as a wedge shape, fins or solid block and made from any material such as but not limited to metal, rock materials or thermoplastics materials (including reinforced thermoplastics), or any other suitable material.

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As shown in figure 4, 5 and 5a (at point 18) the cutting means may be assisted and/or supported by, but not limited to, multiple cutting means and/or assisted by a wedge, bump, fins or extrusion that is situated on or below the safety means, attached securely to the apparatus at any given placement by being welded, screwed, riveted, bolted, cast into the design or otherwise attached securely thereto. This is to aid the splitting action by forcing/splaying the material being used apart further than the blade alone would. The lump, bump, wedge or extrusion would be of equal width or wider than the widest part of the cutting means, it could be fashioned out of any shape such as a wedge shape, fins or solid block and made from any material such as but not limited to metal or plastic.

(Information extracted 08/01/2020 from Patentimages at https://patentimages.storage.googleapis.com/5b/2e/4d/528a3bf348e8ec/WO2014098622A1.pdf).

The Office noted that a sign consists ‘exclusively’ of the shape of goods that is necessary to obtain a technical result when all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context (judgment of 14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 51).

According to the Guidelines for Examination in the Office (Part B, Examination, Page 6), in assessing an EUTM application against Article 7(1)(e)(ii) EUTMR, consideration should be given to the meaning of the expression ‘technical result’. This expression should be interpreted broadly and includes shapes or other characteristics that, for example: fit with another article, give the most strength, use the least material, facilitate convenient storage or transportation.

In light of the above, the Office maintained its opinion that all the essential characteristics of a shape indeed perform a technical function.

Furthermore, the Office noted that according to the Guidelines for Examination in the Office (Part B, Examination, Page 6), the fact that the shape concerned is, or has been, the subject of a claim in a registered patent or patent application constitutes prima facie evidence that those aspects of the shape identified as being functional in the patent claim are necessary to achieve a technical result (this approach has been followed by the Boards of Appeal, for example, in their decision of 17/10/2013, R 42/2013-1, Shape of a stopper (3D)).

The Office stated that in the present case, the applicant’s tool is indeed the subject of a patent application, as shown also in the Kindlingcracker’s website as demonstrated below:

(Information extracted 08/01/2020 from Kindlingcracker at https://www.kindlingcracker.com/pages/kindline-cracker-king).

In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators (see judgments of 19 September 2012, T-164/11, ‘Knife handles’, para. 21; and of 14 September 2010, C-48/09 P, ‘Lego brick’, para. 46).

As regards the applicant’s argument that the mark departs significantly from others in the relevant market, the Office maintained that the mark has also been objected to pursuant to Article 7(1)(e)(ii) EUTMR.

As is clear from Article 7(1) EUTMR, for a sign to be ineligible for registration as a European Union trade mark, it is sufficient that one of the absolute grounds for refusal listed obtains. Each of the grounds for refusal listed in Article 7(1) EUTMR has to be looked at independently of the others and calls for separate examination (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 39; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29).

As regards the lack of distinctiveness of the mark pursuant to Article 7(1)(b) EUTMR, the Office does not find the applicant’s arguments convincing. The Office notes that Article 7(1)(b) EUTMR does not distinguish between different categories of trade marks in determining whether a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings (judgment of 05/03/2003, T-194/01, Soap device, EU:T:2003:53, § 44).

In applying this uniform legal standard to different trade marks and categories of trade marks, a distinction must be made in accordance with consumer perception and market conditions. For signs consisting of the shape of the goods themselves, no stricter criteria apply than for other marks, but it may be more difficult to come to a finding of distinctiveness.

The case-law developed for three-dimensional marks that consist of the representation of the shape of the product itself is also relevant for figurative marks consisting of two dimensional representations of the product or elements of it (judgment of 14/09/2009, T-152/07, Uhr, EU:T:2009:324 and judgment of 04/05/2017, C-417/16 P, device of a square-shpaped packaging (fig.), EU:C:2017:340).

In the present case, the Office maintained its opinion that the two dimensional representation of the good is not sufficiently different from the expected shapes of these goods as it easily enables a consumer to identify information about the goods just by their shape. The Office took the view that the examples provided by the applicant about tools of third parties do not support the applicant’s argument that the shape of the good has a distinctive character.

Furthermore, the Office pointed out that it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claimed that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it was up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

As regards the applicant’s subsidiary claim that the mark has become distinctive through use, the Office noted that Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(b), (c) or (d) EUTMR whereby registration must be refused for trade marks that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade. In the present case, however, the Office maintained its objection pursuant to Article 7(1)(e)(ii) EUTMR and in the present context the claim for acquired distinctiveness is thus irrelevant as the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks, since it has excluded the grounds for refusal listed in Article 7(1)(e) EUTMR from the scope of the exception under Article 7(3).

It follows, therefore, from Article 7(3) of the regulation that, even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark (see judgments of 19 September 2012, T-164/11, ‘Knife handles’, para. 23; and of 14 September 2010, C-48/09 P, ‘Lego brick’, para. 47).

Lastly, the Office provided the applicant with a new time limit of two months to submit further observations in reply to the letter of the Office dated 08/01/2020.

The applicant did not submit any further observations within the time limit. For the reasons set out in the letters of objection, and pursuant to Article 7(1)(e) and 7(1)(b) EUTMR, the application for European Union trade mark No 18 041 202 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.

Paivi Emilia LEINO