Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 22/01/2020

KADOR & PARTNER

Corneliusstr. 15

D-80469 München

ALEMANIA

Application No:	018083402
Your reference:	K68697/1sk
Trade mark:	OPTIMA
Mark type:	Word mark
Applicant:	AIR PRODUCTS AND CHEMICALS, INC. 7201 Hamilton Boulevard Allentown, Pennsylvania 18195-1501 ESTADOS UNIDOS

The Office raised a partial objection on 25/07/2019 pursuant to Article 7(1)(b) and (c), 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 23/09/2019, which may be summarised as follows:

The sign “OPTIMA” has three totally different levels of meaning and will not only be understood as explained and argued by the Office. “Optima” is the plural of the Latin noun “optimum” having as such many different meanings. Furthermore it represents the shortened form of the adjective “optimal” with yet another meaning.

The sign is too vague to be capable to designate the kind, quality, quantity, purpose, value or other characteristics of the goods in question. The relevant consumer will not detect a directly descriptive character. “Optima” is not descriptive of industrial and specialty gas containers, cryogenic gas containers. The relevant consumer will perceive the trade mark in the way it is confronted with it and will not analyse it in various details.

The sign or indication provided by “OPTIMA” has not become customary in the current language or in the established practices of the trade.

The relevant consumers are familiar with the fact that the sign is used for designated goods, services, companies, e.g.: “Optima Büromaschinenwerk Erfurt” or Agfa Optima. Besides “Optima” is also the name of the small town in the US.

Different trade marks consist of the word “Optima”, thus the Office cannot argue it lacks distinctiveness.

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, ‘trademarks 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.

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 trademarks 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 trademarks.

(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).

Under Article 7(1)(b) EUTMR, ‘trademarks which are devoid of any distinctive character’ are not to be registered.

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).

According to Article 7(2) EUTMR, Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union, namely in the Spanish-, Portuguese- and Romanian-speaking part of the European Union.

As stated in the objection in the present case, the relevant Spanish-, Portuguese- and Romanian-speaking consumers would understand the sign as having the following meaning: the best, very good.

The Office has raised an objection on the basis of the understanding of the relevant consumers in the Spanish-, Portuguese- and Romanian-speaking part of the European Union, not on the basis of other possible use or interpretation, or abbreviation of signs.

Besides, 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.)

“OPTIMA” belongs to the standard vocabulary of the Spanish, Portuguese and Romanian languages, as demonstrated by the Office through the dictionary entries provided together with the objection raised on 25/07/2019.

The relevant Spanish-, Portuguese- and Romanian-speaking consumers would not encounter any difficulties in understanding right away, without having to take any further analytic/mental steps, that the sign in question provides information that the goods in class 6, industrial and specialty gas containers, cryogenic gas containers, are very good, the best, are of best quality, the most efficient etc. and that it, therefore, describes the kind and quality of the goods for which protection is sought.

It is irrelevant in the process of assessing the eligibility of a sign to be registered as a trade mark that consumers are used to the verbal element being part of other trade marks, names of companies or representing names of cities. The sign applied for is always assessed individually on the basis of the possible understanding of the relevant consumers and speakers of certain languages in the European Union in relation to the goods and services for which protection is sought.

Regarding the argument of the applicant, several other trade marks consist of the word “Optima”, the applicant has not provided concrete examples, nor if this argument refers to national and/or European trade mark registrations.

Regarding national decisions, 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).

As it regards trade marks registered by the Office, 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).

Nevertheless, the Office has rejected many applications for the registration of the sign “Optima” as a trade mark, e.g.: 24/05/2017, OPTIMA (word), EUTM 016383549; 20/02/2017, OPTIMA (word), EUTM 015840391; 19/12/2016, OPTIMA (fig.), EUTM 015640881.

For the abovementioned reasons and pursuant to Article 7(1)(b) and (c), Article 7(2) EUTMR, the application for European Union trade mark No 18083402 is hereby rejected for all the goods

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.

Alina BUTUMAN