Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/09/2019

ADVOKATFIRMAN MARLAW AB

Box 3079

103 61 Stockholm

SUECIA

Application No:	018055712
Your reference:	244412-443-MA
Trade mark:
Mark type:	Figurative mark
Applicant:	Ahlsell AB (publ) Rosterigränd 12 SE-117 98 Stockholm SUECIA

1. The Office raised an objection on 24/05/2019 pursuant to Article 7(1)(b) and (c) EUTMR 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.

2. The applicant submitted its observations on 12/07/2019 which may be summarised as follows:

• The applicant requests to limit the goods in class 25 to “Clothing; gloves, jackets, waistcoats, trousers, of which all the aforesaid goods are custom-made work clothes for professional buyers”.

• For the current objected goods, the average buyer´s attention should be considered to be greater than that of the public at large. The goods are aimed at settled professional buyers who are the only ones who come in contact with the applicant’s brand. The purchase of the goods in question is typically preceded by planning and considerations in the choice of a suitable product.

• It should be taken into account that the mark is a figurative mark.

• The words ACTIVE and WEAR have different meanings and impose several different associations. The word combination must be analysed and gives a broader and more varied association than the sum of its parts. As a whole it is distinctive.

• Several national registrations for ACTIVEWEAR have been registered.

• The applicant refers to the EUTMR and case law to support its arguments.

3. Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments. After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

The 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).

First of all, the Office confirms that the goods in class 25 have been limited as follows:

“Clothing; gloves, jackets, waistcoats, trousers, of which all the aforesaid goods are custom-made work clothes for professional buyers”.

It is possible that professional buyers of work clothes pay a higher than normal degree of attention when purchasing those goods; however, it cannot be ignored that ACTIVEWEAR is a term that appears in renowned dictionaries such as Oxford, Collins and Meriam-Webster. It has a clearly defined meaning to denote casual, comfortable clothing for wearing while engaging in sports, recreation and outdoor activities.

See among others the following dictionary references (search performed on 30/09/2019):

https://www.merriam-webster.com/dictionary/activewear

https://www.lexico.com/en/definition/activewear

https://www.collinsdictionary.com/dictionary/english/activewear

https://www.ahdictionary.com/word/search.html?q=activewear

It is therefore impossible to imagine how an established word for describing a category of clothing could be perceived as a trade mark even for work clothes. Although ACTIVEWEAR is mainly used to refer to clothes for sport and exercise it is not exclusively so. Many uniforms for physical and active jobs, where one perhaps perspire a lot, could require comfortable clothing made of stretchy/elastic material that dries quickly. Such types of work clothes could certainly be defined as “activewear”.

The mark will immediately be understood as a category/style of clothing and not as indication of the commercial origin of the goods. No cognitive thinking process is necessary in order to grasp the message of the mark, even for a professional in the field.

Of course it cannot be ruled out that the mark may give different associations to some consumers, however, for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article 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 such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

The fact that the mark is written in bold black letters in a particular typeface cannot be considered unusual or striking and adds no distinctive character to the mark as a whole. The descriptive message remains obvious and it is not likely that consumer will perceive the typeface as a trade mark feature.

In the absence of an additional distinctive element, such as a company name or a fanciful logo, there is nothing in the mark that might enable the relevant public to perceive the mark as an indication of commercial origin.

As regards the national decisions referred to by the applicant, 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).

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 018055712 is hereby rejected for rejected for all the goods in class 25, namely for:

Clothing; gloves, jackets, waistcoats, trousers, of which all the aforesaid goods are custom-made work clothes for professional buyers.

The application may proceed for the remaining goods in classes 9 and 10.

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.

Cecilia ÅLIN