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

(Article 7 EUTMR)

Alicante, 24/08/2020

Barker Brettell Sweden AB

Östermalmsgatan 87B

SE-114 59 Stockholm

Sweden

Application No:	18226710
Your reference:	CAW106596T.EM
Trade mark:	LIQUIDMETAL
Mark type:	Word mark
Applicant:	Crucible Intellectual Property, LLC 20321 Valencia Circle Lake Forest California 92630 United States of America

The Office raised an objection on 30/04/2020 pursuant to Article 7(1)(b)(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 letters, which form an integral part of this decision.

In its communications received by the Office on 29/06/2020, the applicant submitted its observations which may be summarized as follows:

1. LIQUIDMETAL is a trade mark used exclusively in relation to the Applicant’s unique amorphous metal alloys. The applicant notes that the Examiner’s fourth article reference3 does in fact refer to the Applicant’s LIQUIDMETAL, however, unfortunately, indicated with a space between the words. LIQUIDMETAL was first introduced for commercial applications in 2003 and has been used for, among other things, golf clubs, watches and covers of cell phones.

2. When the Examiner refers to “liquid metal”, he refers to metal or metal alloys with a low melting point which are liquid at room or near room temperature. The Applicant also notes that the majority of the Examiner’s referred to Internet articles mention and describe just that, with some exceptions as mentioned below. As indicated by the majority of the Examiner’s references, “liquid metal” is just that, a metal in liquid shape. Liquid metals can be used to conduct heat and/or electricity between non-metallic and metallic surfaces and typical uses include thermostats, switches, barometers, heat transfer systems, and thermal cooling and heating designs. Consequently, “liquid metal” is not descriptive of the applied for goods or their qualities or of the services. The applied for goods are not “liquid” and are not manufactured using “liquid metal”. Therefore, the term “liquid metal” would not be used by the relevant public to describe the goods and services or their characteristics. The term can at most be said to be suggestive, however, not of the end products but of the chemical structure of the products. Furthermore, there is no competitive need for the applicant’s competitors to use the mark.

3. The relevant consumer will pay far more attention to the trade mark than the average consumer. Due to the sophisticated nature of the consumer, on seeing the subject trade mark, they would immediately and without further reflection understand that the mark denotes the Applicant’s goods.

4. There are a number of registered marks containing the term ‘liquidmetal’.

5. Various judgments are cited in support of the applicant’s arguments.

6. The applicant made a subsidiary claim of acquired distinctiveness

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection, for the reasons set forth below.

1-2.

The applicant argues that it has owned and been using its mark ‘liquidmetal’, therefore, the objection cannot be maintained. However, it is recalled that the Office is not bound to examine facts showing that the mark claimed has become distinctive through use within the meaning of Article 7(3) EUTMR unless the applicant has pleaded them (judgment of 12/12/2002, T-247/01, Ecopy, EU:T:2002:319, § 47). It follows that acquired distinctiveness is neither presumed nor examined ex officio. Rather, this must be proved by submitting evidence, following a relevant claim which the applicant made for the first time in its observations.

With regard to the inherent distinctiveness of the sign, the Office took into account the meaning of the words composing the sign and assessed their distinctiveness, by first defining the words, then citing examples of the use of their combination on the marketplace and finally determining how the term at issue is linked to the goods and services. It is recalled that assessing the mark as a whole does not mean its individual elements should not be examined first. The Office did that and concluded that the combination of ‘liquid’ and ‘metal’ merely indicates the semantic content conveyed by these words without adding any extra layer of meaning or interpretation, in the context of the goods and services objected to. The Office refers to the examples cited in support of its arguments, as provided in the notice of objection. In this regard, it is noted that while the applicant made comment on a possible misspelling of its own mark in one of the articles, it has essentially left unaddressed the rest of the articles providing information concerning a material called liquid metal and its current and potential use in various fields. The said articles show that the term ‘liquid metal’ is consistently used to refer to a novel material with great potential in use of the manufacture of a wide range of products. Furthermore, in response to the applicant’s argument that the applied for goods are not “liquid” and are not manufactured using “liquid metal”, therefore, the term does not describe characteristics of the goods and services, it is established case-law that if a sign is descriptive of an important component of a product, it is descriptive of that product too since consumers would immediately make the relevant association. (see, for example, judgment of 15/01/2013, T-625/11, EcoDoor, EU:T:2013:14, § 26). In fact, and for the sake of completeness, it is recalled, that Article 7(1)(c) EUTMR covers any characteristics of the goods if those are desirable or otherwise relevant for the target public, without even requiring those characteristics to be commercially essential; they may be merely ancillary (judgment of 12 February 2004, C-363/99, ‘Postkantoor’, §  102).

Furthermore, for a sign to be refused registration under Article 7(1)(c), it is not even 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 provisions 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 (see judgment of 23/10/2003, C‑191/01 P, DOUBLEMINT, EU:C:2003:579, § 32).

As regards the actual goods and service objected to and their link with the sign’s meaning, the Office explained in the notice of objection that “the relevant consumers would perceive the sign as providing unambiguous information that the goods at issue are liquid metal or manufactured by using liquid metal as one of their essential components or accessories used in relation thereto and the services concern production or processing of liquid metal or manufacturing of goods by using liquid metal. The above examples clearly show the present and prospective fields of use of liquid metal and these may range from the automotive industry to electronics, sporting articles and medical equipment.” The applicant has failed to provide convincing evidence or argument in response to this conclusion of the Office, other than claiming that these goods are not liquid or do not contain liquid metal. It is, therefore, maintained that the finding of descriptiveness applies to all the goods and services objected to since the goods may all – prospectively – contain liquid metal as one their components and the services being manufacturing of various goods may all be based on using liquid metal. In this regard, it is also noted that while the Office provided explanation as to the objectionability of the goods and services, the applicant merely refused these arguments without assessing the actual goods and services. It is hard to deny link between the term ‘liquid metal’ and the applicant’s ‘metals’ in Class 6 or ‘metal fabrication’ in Class 40, for the sake of example.

Finally, it is recalled that the claim that other traders do not need the term applied for is irrelevant since, while there is a public interest underlying Article 7(1)(c) EUTMR that descriptive terms should not be registered as trade marks so as to remain freely available to all competitors, it is not necessary for the Office to show that there is, on the part of third parties, a present or future need to use, or concrete interest in using, the descriptive term applied for (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 35; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 61).

3.

With regard to the degree of attention of the public, this was defined as varying from average to above average in the notice of objection. Irrespective of which of the goods and services objected to may have consumers exercising a higher attention, it does not follow that the descriptiveness threshold of the sign must be somehow higher in order to fall within the application of Article 7(1)(c) EUTMR when the relevant public belongs to the specialized public (see judgment of 12 July 2012, C-311/11 P, ‘Wir machen das Besondere einfach’, paragraph 48). The Office does not see any valid reasons why, owing to their professionalism in the sector, the targeted consumers would not perceive the descriptive connotation of the sign. Rather to the contrary, they are even more likely to perceive that descriptive connotation, given their expertise and knowledge of the market.

4.

The applicant refers to registered EUTMs containing the word ‘liquidmetal’ with or without figurative elements added. In this regard, it is recalled that each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (judgment of 08/07/2004, Case T-289/02, ‘TELEPHARMACY SOLUTIONS’, paragraph 59). The mere fact that in other cases a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature.

5.

The applicant cited various case-law in support of its arguments, including judgment of 14/04/2005, T-260/03, Celltech, EU:T:2005:130, judgment of 05/04/2001, T-87/00, EasyBank, EU:T:2001:119, and judgment 25/09/2015, T-591/14, PerfectRoast, EU:T:2015:700. The Office has looked at these judgments and found that in the first case, the sign at issue was allowed in the absence of proper explication and provision of examples as to how that particular sign would have been descriptive. This is not the case here since the Office has provided ample example of the use of the term composing the applicant’s sign. In the second case, the Court found the link between the goods and the sign too vague; this cannot apply to the present case where the sign indicates a material which could be a component of the goods at issue. Finally, in the third case, the sign was actually found to be descriptive of a large part of the goods.

Based on all the foregoing, it is concluded that the sign is considered to be descriptive as a whole and, consequently, also devoid of distinctiveness. Thus, it is not capable of fulfilling its essential function, namely to distinguish the goods and services of one undertaking from those of another.

Therefore, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 226 710 is hereby rejected for all the goods and services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Ferenc GAZDA