Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/05/2020

Indelible IP Limited

Michelle Anne Ward

Woodfield House

Llanishen, Chepstow, Monmouthshire NP16 6QS

REINO UNIDO

Application No:	018083722
Your reference:	T.IND.000704.ct
Trade mark:	GELFORM
Mark type:	Word mark
Applicant:	Makura Sport Limited Lakeside Fountain Lane St Mellons Cardiff CF3 0FB REINO UNIDO

The Office raised an objection on 16/07/2019 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.

On 11/09/2019, the applicant requested an extension of the time limit, which was granted by the Office.

The applicant submitted its observations on 15/11/2019 and on 20/12/2019, which may be summarised as follows.

1. The mark is not descriptive of ‘… the core goods in question, mouthguards, [which] are flexible in structure, they are not jelly-like as they would not be able to provide the required protection to teeth in such a format.’ It is a fanciful conjoined word.

2. The mark is not descriptive and non-distinctive for gymnastic and sporting articles in Class 28 as it is a broad category that also contains goods with rigid structures.

3. The expression is a registered mark in the United Kingdom Intellectual Property Office.

4. ‘… the Applicant has made extensive use of their GELFORM brand across the EU, including in the English-speaking countries of UK and Ireland… the trade mark has, through extensive use in a niche market for a specialised product, established a level of recognition to provide acquired distinctiveness.’ The mark is always clearly identified with the ^‘TM’ symbol.

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 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).

Reply to the applicant’s arguments

In relation to the applicant’s first argument, in its letter of 16/07/2019 the Office explained the meaning of the term in question and showed the link between the expression and the goods for which protection is sought.

The assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which protection is sought. In the present case, the relevant English-speaking consumer would understand the sign as having the following meaning: a semirigid jelly-like colloid shape, appearance.

[…]

In the present case, the relevant consumers would perceive the sign as providing information that goods in Class 9 (protective and safety equipment, mouth protectors [gum shields], mouth guards, gum shields, mouth guards for sports use, parts and fittings for the aforesaid goods) and in Class 28 (gymnastic and sporting articles, protective articles for sport) are protective and safety goods and their parts and fittings, gymnastic and sporting articles, and protective articles for sport made of or including as the principle feature a gel, they are in a gel form. Therefore, the sign describes the kind and feature, characteristic of the goods in question.

Therefore, the Office showed that, in relation to the goods in question, the expression will be perceived by the relevant public as a description of the goods to the extent that the goods are in the form of a gel.

Moreover, the fact that the combination of words used is not common does not mean that it is a violation of English grammar rules, or that the expression created will not be understood by the relevant public. An objection under Article 7(1)(b) and (c) EUTMR also applies in those cases where the lexical structure employed, although not correct from a grammatical point of view, can be considered common in the relevant commercial context.

Consequently, the precise grammatical use of the elements of a trade mark is not decisive in determining whether or not a mark is descriptive. Writing two words together without spaces, or adding or removing a hyphen, does not make a substantive difference, and therefore the mark remains non-distinctive.

The meaning of the expression ‘GELFORM’ is clear to the relevant English-speaking public, who will immediately, and without any difficulty, establish a direct and specific link between the trade mark and the goods for which registration is sought. Therefore, ‘GELFORM’ is intelligible to the relevant consumer in connection with the goods for which registration is sought.

In relation to the second argument, as the applicant states, the term gymnastic and sporting articles is a broad term and, therefore, it can comprise not only goods of rigid structure, but also, as indicated in the letter of the Office cited above, goods made of, or including as the principle feature, a gel, that is, they are in a gel form, appearance.

Following the Office’s practice:

As regards descriptiveness, an objection applies not only to those goods/services for which the term(s) making up the trade mark applied for is/are directly descriptive, but also to the broad category that (at least potentially) contains an identifiable subcategory or specific goods/services for which the mark applied for is directly descriptive. In the absence of a suitable restriction by the applicant, the descriptiveness objection necessarily affects the broad category as such. For example, ‘EUROHEALTH’ is to be refused for ‘insurance’ as a whole and not only for health insurance (07/06/2001, T‑359/99, EuroHealth, EU:T:2001:151, § 33).

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).

The applicant’s final argument makes reference to acquired distinctiveness through use, not to its intrinsic distinctiveness. The evidence provided by the applicant is examined below.

In view of the above, the mark will be perceived by the average relevant consumer, who is reasonably well-informed, observant and circumspect, as intrinsically descriptive and non-distinctive for the goods for which protection is sought in the relevant market.

In addition to the abovementioned arguments, in the reply of 15/11/2019 to the Office’s objection letter of 16/07/2019, the applicant included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR.

In view of the above, on 21/11/2019, the Office issued a request for clarification on the nature of the claim.

On 20/12/2019, the applicant replied that the claim of acquired distinctiveness was a principal claim.

In your claim, you indicate that the trade mark applied for has acquired distinctiveness through use in relation to all the goods.

In support of your claim, you submitted evidence of use on 15/11/2019 and on 20/12/2019.

The evidence to be taken into account is the following:

• affidavit of 08/11/2019 by Mr Robert Davies, the managing director of the applicant’s company, Makura Sport Limited, stating the following:

• use of the mark ‘GELFORM’ started in 2008 ‘… as the name of a liner that is incorporated into our mouthguard/gumshield products’,

• the mark is used as a constituent element and in conjunction with other product brands. Examples of product packaging are provided,

• distributors, one of them in Ireland, are listed. Examples of their websites showing mainly Makura products are provided,

• statement claiming that the applicant has attended several trade shows, including ‘Schoolwear Show UK’ in 2015 and 2016, supported by photographs of the applicant’s stand with no mention of the mark in question,

• statement of sales for the European Union (EU) and the United Kingdom (UK) from 2014 to 2019 and samples of invoices – none of them mentions the mark ‘GELFORM’,

• statement on advertising expenditure from 2014 to 2019,

• press clippings from Sports Insight Magazine of 2010, 2011, 2014, 2015, 2017-2019 in which the mark appears.

Assessment of the evidence

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect …

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The applicant provided some evidence in relation to the mark in question, such as examples of packaging (on which it appears in relation to the mouthguard), press clippings and distributors’ websites (only one is from an English-speaking country: Ireland).

The mark does not appear on the invoices provided, which make reference to other marks. The same is true in the case of the evidence submitted in relation to the participation of the applicant in trade shows.

The photographs provided do not clearly indicate that they refer to the ‘Schoolwear Show UK’, are not dated, and contain no mention of the mark in question.

The statements on sales and on advertising do not indicate whether they were for the mark in question, whether these sales took place solely under the mark in question or are for all the applicant’s marks.

The evidence refers to no other goods except mouthguards in relation to the mark.

The applicant failed to submit evidence that could demonstrate that the mark has acquired distinctiveness through use in relation to the trade mark at issue, namely:

• opinion polls/surveys,

• market share information, turnover and sales figures that take place under the trade mark,

• investment in advertising that relate directly to the trade mark,

• annual reports.

The evidence submitted as a whole is not enough to prove that the mark has acquired distinctive character through use in the English-speaking European Union countries. It is not clear that at least a significant proportion of the relevant public from the these countries will see the mark as identifying the goods for which protection is sought as originating from a particular undertaking.

Conclusion

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the reasons mentioned above in this decision, and pursuant to Article 7(1)(b), (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 083 722 is hereby rejected for all the goods claimed:

Class 9 Protective and safety equipment; mouth protectors [gum shields]; mouth guards; gum shields; mouth guards for sports use; parts and fittings for the aforesaid goods.

Class 28 Gymnastic and sporting articles; protective articles for sport.

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.

Monika TOMCZYNSKA