Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/02/2020

Laytons LLP

2 More London Riverside

London SE1 2AP

REINO UNIDO

Application No:	018098124
Your reference:	037908.3/RMG
Trade mark:	PRO-CARBON
Mark type:	Word mark
Applicant:	Pro-Carbon Racing Limited 16 Still Close Peterborough PE6 8JZ REINO UNIDO

The Office raised an objection on 28/08/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 02/01/2020, which may be summarised as follows:

1. The word ‘pro’ has multiple meanings and consequently the multiplicity of meanings prompts a mental process in the relevant public, as to what the meaning of the sign actually is.

2. The evidence clearly shows that the first pages of a Google search for the phrase ‘professional carbon fibre’ display the goods different from the applicant‘s goods and services. Therefore the term ‘PRO-CARBON’ is original and distinctive.

3. The sign comprises a syntactically unusual juxtaposition.

4. The Office has previously registered similar marks involving the verbal element ‘PRO’, such as FISH-PRO, FINAL CUT PRO, PRO-MEDICAL.

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.

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

In addition, Article 7(2) EUTMR states that paragraph 1 of that article shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

Relevant public

It is settled case-law that the distinctive character of a trade mark must be assessed by taking into account first, the goods or services in respect of which registration has been applied for and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question, who are sufficiently well informed and reasonably observant and circumspect (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 & C‑474/01 P, Tabs (3D), EU:C:2004:260, § 33).

The average consumer’s level of attention is likely to vary according to the category of goods or services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 2; 07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18 and the case-law cited therein).

Having regard to the nature and purpose of the goods and services in question, the relevant public is the general and specialist public, whose level of attention will vary from average to high.

The word elements of the sign applied for are English words, meaning that account must be taken of the point of view of English-speaking consumers, or even consumers who are not English speakers but who have sufficient knowledge of English (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 76).

Therefore, the public by reference to whom the absolute grounds of refusal must be assessed, consists at least of the public in Ireland, Malta and the United Kingdom.

In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the goods and services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the part of relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Further, it should be recalled that 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. Therefore, an obstacle pertaining to the English-speaking public of the European Union is deemed to be sufficient in order to reject a trade mark application.

The mark applied for is the expression ‘PRO-CARBON’.

The Office notes that the applicant does not completely contest that the verbal elements ‘PRO’ and ‘CARBON’ can be found in the relevant dictionaries, but claims that the sign has multiple meanings, possesses a minimal level of distinctive character and requires some mental steps to make an association with the goods and services in question. However, both verbal elements of the sign applied for are ordinary words and make perfect sense when considered together.

The Office considers that the expression as a whole, in relation to the goods and services applied for, would be perceived by the relevant public as referring to the professional carbon fibre. The relevant public will see this as no more than a promotional and informational statement related to the goods and services.

Such a link between the sign and the goods and services is sufficiently direct and specific. The meaning of the sign would not be seen as vague, but as directly and clearly referring to the goods and services in question.

There is nothing fanciful about the mark applied for. In fact, when viewed in relation to the goods and services for which protection is sought, the relevant public will easily and without further thought understand its meaning. No huge amount of imagination is required to comprehend the meaning of the mark applied for in relation to the goods and services.

It must also be mentioned that it does not matter whether the sign at issue can have several meanings or its meaning is less obvious, as this would not suffice to make it distinctive. A sign is distinctive only when it can be perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

By analogy, see also - 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.)

See also - the relevant consumer in this case can have no possible doubt as to the meaning of RESULTS PLUS. The way these two terms are juxtaposed follows the rules of English grammar and common parlance. Taking the trade mark applied for as a whole, the meaning is no different from the joint concept of the terms ‘RESULTS’ and ‘PLUS’. The addition of the term ‘PLUS’ only reinforces and further defines the descriptive notion of the term ‘RESULTS’. The overall meaning of the term, looked at as a whole, is that the applicant offers services in the veterinary field which give more, extra or better results. In any case, the syntactical or grammatical correctness of the phrase is not the litmus test for its registrability. The case-law of the Court of Justice and Court of First Instance has evolved considerably since the BABY-DRY judgment (see decision of the Second Board of Appeal of 2 August 2004 in Case R 262/2003-2 ECONOMY PLUS, at paragraph 11). Rather, it is the ability of a sign to identify the commercial source of the marked products that is of prime importance. (30/07/2007, R 567/2007-2, -‘RESULTS PLUS’, paragraph 15)

The expression ‘PRO-CARBON’ contains a meaningful, simple and straightforward English expression, which is not surprising or unexpected. Therefore, it is not able to distinguish the goods and services in question from the same goods and services provided by others.

The sign ‘PRO-CARBON’ is not unusual and is the direct result of the sum of its verbal elements.

It can be safely assumed that the meaning of the verbal elements composing the sign will be obvious for the relevant public and that the expression ‘PRO-CARBON’ will most certainly be recognised and understood in its common and ordinary meaning, as described by the Office.

There is nothing about the expression ‘PRO-CARBON’ that might, beyond its obvious promotional and informational meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services for which protection is sought. The English-speaking public in the European Union will not see the mark ‘PRO-CARBON’ as a badge of a particular trade origin for the goods at issue, but rather as a banal message.

Although it is acknowledged that even signs with a low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because distinctive character means that the trade mark applied for guarantees the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.

(15/09/2005, C‑37/03 P, BioID, ECLI:EU:C:2005:547).

Given this, contrary to the applicant’s assertion, the mark applied for does not have a minimum degree of distinctive character sufficient to render inapplicable the present ground for refusal (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39).

As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

By analogy, see also - as regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods and services to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

0. The Office notes that the applicant put emphasis on the use of the sign on the Internet. Although use of the sign by others on the Internet can be a valid indication when considering the applicability of Article 7(1)(b) or (c) EUTMR, it is not a conditio sine qua non’ (decision of 28/06/2007, R 371/2007‑2, PUBLIC STORAGE, § 16).

Since the applicant claimed that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired through use, since he is much better placed to do so, given his thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

On the basis of that practical experience, the Office considers that, in relation to the objected goods, the word mark ‘PRO-CARBON’ has no features that might lead the relevant public to believe that it is an indication of commercial origin.

Considered as a whole, the sign applied for, due to its non-distinctive nature, would not allow the relevant public to distinguish the commercial origin of these goods and services from those of other undertakings providing identical or similar goods and services and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

Previous registrations

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to the 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).

Furthermore, the marks cited by the applicant have different meanings from the sign in this case and are registered for different goods and services. It must be made clear that the Office has refused other marks comprasing of the verbal element ‘PRO’. See in this respect, the Office Trade Mark Guidelines and the judgments confirming the previous Office decisions (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 29-32).

The previous registrations cited have been found to be distinctive in their own right. The mere fact that they consist of the verbal element ‘PRO’ cannot support registrability of the mark in question.

Conclusion

For the reasons set out above, and in the previous notification, the sign does not possess the necessary distinctive character for the goods and services indicated, pursuant to Article 7(1)(b) EUTMR in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, that is to say, it fails to distinguish the goods and services in question from those of other undertakings.

For the abovementioned reasons, and pursuant to Article 7(1) EUTMR, protection of this European Union Trade Mark Application is hereby rejected for the following goods and services:

Class 12 Motor vehicles; vehicle tyres; motorcycles for motocross; motorized dirt bikes for motocross; parts and fittings for vehicles; parts and fittings for land vehicles; parts and fittings for water vehicles; parts and fittings for air and space vehicles.

Class 35 Retail services relating to motor vehicles, motor sport vehicles and vehicle tyres; retail services relating to motorcycles for motocross; retail services relating to motorized dirt bikes for motocross; retail services relating to parts and fittings for vehicles; retail services relating to parts and fittings for land vehicles; retail services relating to parts and fittings for water vehicles; retail services relating to parts and fittings for air and space vehicles.

Class 42 Engineering design; engineering design services; engineering design and consultancy; design of motor vehicle parts; design of land vehicle parts; design services for parts of motor vehicles; design of vehicles and vehicle parts and components; vehicle design services.

The application will proceed accordingly for the following services:

Class 35 Advertising; Marketing, advertising, and promotional services; sponsorship search.

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.

Jiri JIRSA