Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 18/11/2020

WYNNE-JONES IP LIMITED

2nd Floor, 5210 Valiant Court Gloucester Business Park

Gloucester Gloucestershire GL3 4FE

REINO UNIDO

Application No:	018239722
Your reference:	JA/MT/TM10260EM
Trade mark:	keepSAFE
Mark type:	Figurative mark
Applicant:	Bunzl UK Limited York House 45 Seymour Street London W1H 7JT REINO UNIDO

1. The Office raised an objection on 27/05/2020 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.

2. After an extension of two months and two weeks the applicant submitted its observations on 16/10/2020. The observations may be summarised as follows:

• The applicant provides a Witness Statement of Stuart Heritage, the Purchasing Director at Bunzl Greenham and Bunzl Cleaning & Hygiene Supplies, a division of Bunzl UK Limited (the applicant).

• In the Witness Statement Mr. Heritage provides the following information and arguments:

The applicant’s company is part of the Bunzl Group (Bunzl Plc). Information about the history of the company and information about the company’s world wide revenue and the number of employees is provided (Exhibit SH-01 - an extract of Bunzl Plc’s 2019 Annual Report).

The applicant specialises in the supply of personal protective equipment, janitorial, cleaning and hygiene products in the UK and Republic of Ireland. The sister company Bunzl Continental Europe handles operations across Europe.

Over the past ten years, the company has become one of the leading manufacturers and distributors of protective clothing, footwear, headgear products and accessories in the UK and Europe. Since at least 2009, the company has used the brand KEEPSAFE (logo) as a platform for a range of protective garments and accessories. The current iteration of the KEEPSAFE logo mark (red triangle and black letters) has been used since 2014. The logo is used either on the goods themselves, or on packaging, external swing tags and care labels.

The applicant refers to website links to its own companies (trading divisions, sister companies and subsidiaries), and other companies which sell and advertise its goods, and catalogues and trade magazines which feature the applicant’s goods. See the Exhibits listed below.

The mark is also featured on Social media. (Extracts from Twitter and YouTube are provided).

The turnover for KEEPSAFE branded products within the UK and Ireland the years 2012 - 2019 is provided. As the applicant supplies the KEEPSAFE logo-branded products at wholesale and retail level the values referenced do not represent to the total value of market sale because retailers will often add mark ups on the products.

The applicant submits the following evidence:

Exhibit SH-01: An extract of Bunzl Plc’s 2019 Annual Report.

Exhibit SH-02: Screenshots from the websites www.greenham.com dated between October 2009 and September 2017.

Exhibit SH-03: Screenshots taken from www.protecdirect.co.uk demonstrating advertising use of the KEEPSAFE logo mark in respect of protective clothing products. The screenshots are dated from December 2016 to September 2020.

Exhibit SH-04: A compilation of screenshots taken from www.lockhart.co.uk dated between June 5 2017 and March 2019.

Exhibit SH-05: Screenshots taken from www.screwfix.com and www.screwfix.eu dated between February 2015 and September 2017 showing a range of gloves being offered for sale under the KEEPSAFE logo mark.

Exhibit SH-06: Screenshots taken from www.safetyservicesdirect.com which demonstrates use of the KEEPSAFE logo mark on protective clothing goods between March 2015 and August 2017.

Exhibit SH-07A to SH-07H: A selection of extracts taken from Bunzl and affiliated companies catalogues dated between 2013 and 2018. The products are available to customers in the UK and EU.

Exhibit SH-08: A copy of a 2016 catalogue which contains personal protection equipment available to order for Network Rail staff.

Exhibit SH-09: Screenshots taken from issue 99 dated 01/12/2015 from the magazine HSE International which specialises in health, safety and environmental practices featuring KEEPSAFE branded goods.

Exhibit SH-10: 6 copies of invoices relating to products purchased by the applicant under and by reference to the KEEPSAFE logo mark. These products were then marketed under the KEEPSAFE logo mark within the EU.

3. 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.

As the applicant did not argue regarding the mark’s inherent distinctiveness, but only provides evidence of use, it is assumed that the applicant claims acquired distinctiveness under Article 7(3), and that the claim is principal.

You indicate that the trade mark applied for has acquired distinctiveness through use in relation to all the goods applied for.

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 relevant public is average consumers and professionals in a number of industries and sectors in the native English-speaking Member States, namely the UK, Ireland and Malta, and in Member States where English is well understood such as Cyprus, Denmark, Finland, the Netherlands and Sweden.

It has to be shown that the relevant public had come to view the mark as an indication of commercial origin at the time of the filing of the application, namely 15/05/2020.

The mark as a whole is clearly non-distinctive for the protective clothing in class 9 and clothing, footwear and headgear in class 25. Therefore, the evidence that the mark has acquired distinctiveness has to be very strong and convincing.

The applicant states that its company has become one of the leading manufacturers and distributors of protective clothing, footwear, headgear products and accessories in the UK and Europe, but does not indicate its market share.

The applicant provides catalogue material and advertising material such as screenshots from web sites, and also provides sales figures for the UK and Ireland for the period 2012 - 2017.

It is noted that no advertising figures have been provided, and that no sales figures have been provided for Malta or for countries were English is well-understood such as Cyprus, Denmark, Finland, the Netherlands and Sweden.

The sales figures for the UK and Ireland range from £26,279 251 (the year 2013) to £17,375,590 (the year 2019). From the submitted figures it is impossible to know how the sales have been divided between the two countries, e.g. if most sales have been made in one of the countries.

Furthermore, the Office highlights that, according to the General Court, a distinction must be made between “direct proof” of acquisition of distinctive character (surveys, evidence on the market shares haled by the mark, statements from chambers of commerce and industry or other trade and professional associations) and “secondary evidence” (sales volumes and advertising material, duration of use) that are merely indicative of the mark’s recognition on the market. Though secondary evidence may serve to corroborate direct proof, it cannot substitute it.

Generally, there is a lack of evidence that focuses on the perception of the relevant public (market surveys).

Therefore, in an overall assessment, the Office cannot but conclude that the evidence presented is insufficient in order to demonstrate that, in the eyes of the relevant public, the mark ‘ ’ has become distinctive in relation to the goods sought, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) has not been proven.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 239 722 is hereby rejected for all the goods claimed.

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.

Anne-Lee KRISTENSEN