DECISION

of the First Board of Appeal

of 25 January 2016

In Case R 834/2015-1

Winn & Coales International Limited
Denso House Chapel Road West Norwood London SE27 0TR United Kingdom	Applicant / Appellant

represented by BOULT WADE TENNANT, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom

APPEAL relating to Community trade mark application No 13 248 802

The First Board of Appeal

composed of Th. M. Margellos as a single Member having regard to Article 135(2) and (5) CTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 11 September 2014, Winn & Coales International Limited (‘the applicant’) sought to register the figurative mark

for the following list of goods and services:

Class 2 – Anti-corrosive bands; anti-corrosive papers; anti-corrosive waxes; anti-corrosive preparations; anti-corrosive compositions; anti-corrosive substances; anti-corrosive agents; anti-corrosive products for metals; anti-corrosives and anti-corrosive compounds; anti-rust products and preparations; coating preparations and materials; sealing preparations; sealing compositions in the nature of paint; protective coatings with sealing qualities for use on metals [paints]; paints, varnishes, lacquers, colourants and dyestuffs; epoxy coatings; epoxy primers; epoxy resin coatings; anti-corrosive and fire retardant coatings; anti-corrosive coatings (paints); anti-corrosive compounds as additives to surface coatings; coating compositions in the nature of paint for industrial applications; coating compositions having waterproofing properties (paints or oils); coating compositions in the nature of oils; coating compositions in the form of paint; coating of plastics to protect metal against damp (paints); coating preparations for protection against rust; coating preparations for protection against friction; coating preparations for protection against wear; coating substances made from bitumen (paint); coatings being inorganic (paints or oils, other than building materials); coatings being intumescent (paints or oils, other than building materials); coatings for use as primers; corrosion inhabitants in the nature of a coating; corrosion resistant coatings; elastomer waterproof coating preparations (paints); exterior surface protective coatings; industrial coatings in the nature of paint; liquid plastics surface coatings (paints) for protection against moisture; liquefied plastics in the nature of paints for use as surface coatings; non-metallic coating materials (paints); organic coatings (paints); preparations for coating surfaces to protect against abrasion; preparations for coating surface to protect against corrosion; preparations for use as waterproofing coatings on the surfaces of structures; protective coating compositions (paints); protective coating materials in the nature of paint; protective coatings for application in liquid form for use on metals; protective coatings for metals (paints); protective coatings in the form of sprays for use on metals (paints); protective coatings (paints) for concrete forms; protective surface coatings for metals; protective surface coatings (paints); protective surface coatings for wood; resinous coatings; resins for coating purposes; rubber coatings in the nature of paint; rust preservatives in the nature of a coating; rust preventatives in the nature of a coating; protective sealant for pipes; protective coatings for application in liquid form for use on concrete; spray coatings (lacquers); spray coatings (paints); spray coatings (varnishes); stabilising preparations in the nature of coatings; stone sealer coatings; surface coatings in the nature of paint; thinners for coatings; tints for surface coatings; water-based metallic coatings in the form of sprays and liquid gels; waterproof coatings (paints); weather resistant coatings (paints); weatherproofing coatings (paints) for concrete; weatherproofing coatings (paints); fillers and filler materials in the nature of paint; primer fillers in the nature of paint; protective coatings with sealing qualities for use on metals (paints); sealing compositions in the nature of paint; sealing liquids (preservatives) for wood; sealing preparations (paint); weather sealing stains; primers; primer compounds; sealant primers; coatings for waterproofing (except chemicals); coatings in the nature of industrial sealants; elastomer waterproof coating preparations; non-metallic waterproofing materials in the nature of paint; preparations for waterproofing (paints); protective coatings for waterproofing surfaces of buildings (paints); waterproofing compounds (paint); bitumen varnish;

Class 17 – Insulating materials; insulating sheets and boards; semi-finished and semi-processed plastics and artificial resin products; adhesive anti-slip tape for flooring applications; adhesive masking tapes (other than for household or stationery purposes); adhesive tape for industrial and commercial use; adhesive tapes; anti-corrosion tape; duct tape; insulating tapes; pipe joint tape; plastics tape (other than for medical or stationery use); rubber tape for insulating; sealing tape of rubber (other than for household or stationery use); self-adhesive tapes (other than for stationery, household or medical purposes); strapping tape; tape (insulating); tapes for insulating purposes; tapes of epoxy impregnated fibreglass for insulating; insulating coatings; insulatory coatings of plastic resin; oil-tight synthetic resin coatings for the surface sealing; protective acrylic coatings in the form of paints for insulating purposes; protective acrylic spray coatings for insulating purposes; fabrics made from polyester for use as insulation; polyester tape (other than for medical or stationery use); insulating adhesives; adhesive sealant and caulking compound; adhesive sealants for general use; adhesive materials in the form of strips [other than for household, medical or stationery use]; adhesive materials in the form of bands [other than for household, medical or stationery use]; insulating adhesives; expansion joint fillers; expansion joint fillers for bridges; expansion joint fillers for pavement; fillers for joint packing; fillers for panel joints; insulating fillers; caulking compounds for sealing cracks; insulations with sealing functions for heat protection; joint sealing compounds; mastic for sealing joints; adhesive sealing strip for roofing joints; articles made of rubber for sealing; articles of rubber for use in sealing pipes; non-metallic sealing compounds for joints; paints for sealing (insulating); pipe sealing compositions; pipe jointing compounds for sealing cracks; pipe jointing compounds for sealing pipe threads; pipe linings (non-metallic) for sealing pipes; sealants for sealing joints; sealing compounds; sealing compounds for stopping leakage from oil tanks (other than chemicals); sealing compounds (mastics); sealing elements consisting of rubber; sealing putty; sealing tape for use with insulated glass; sealing tape (other than for household or stationery use); mastic compositions for sealing and jointing; waterproof membranes for use in manufacture; waterproof or insulating packing; waterproof packings; waterproof sealants; waterproof membranes of rubber; cylinder jackets; insulation jackets for industrial pipes; jackets (insulating) for pipes; jackets (insulating) for tanks; non-metallic insulated pipe jackets; non-metallic insulated pipe jacket muffs; pipe jackets, not of metal; thermal insulation jackets for valves; thermal insulation jackets for industrial plant; polymer fibres for use in bitumen;

Class 19 – Epoxy grout; pitch epoxy based surfaces for roads; bitumen substances for coatings; coatings (building materials); liquid plastics surface coatings for protection against moisture (not paints); mastic asphalt; rubberized asphalt primer; bituminous products in the form of membranes for waterproofing; flashings (non-metallic) for waterproofing buildings; waterproof bituminous membranes reinforced with glass fibre; bitumen; bitumen based compositions; bitumen emulsion; bitumen latex emulsions for construction purposes; bituminous sealing membranes.

2. On 17 September 2014, the examiner notified a letter of provisional refusal of protection pursuant Article 7 CTMR and Rule 11(1) CTMIR, on the grounds that the trade mark applied for did not appear to be eligible for registration under Article 7(1)(b) CTMR in conjunction with Article 7(2) CTMR, with respect to all the goods applied for.

3. The examiner argued, in essence, that the relevant public consisting of English-speaking professional and average consumers who were reasonably well-informed and reasonably observant and circumspect would understand the mark applied for as a meaningful expression referring to ‘a protective/decorative covering business or company of the first rank’, furthermore the device consisted of a commonplace label featuring bands either side of a rectangle. The examiner pointed out that such labels were devoid of any distinctive character as they were too simple and were, therefore, incapable of conveying a message that could be remembered by consumers or too commonly used in relation to the goods and which were intended to catch the consumer’s attention but not to indicate commercial origin, and that taken as a whole the mark applied for, therefore, consisted of a combination of descriptive and non-distinctive elements which the relevant public would fail to perceive immediately as a indication of the commercial origin of the goods. That the mark would be perceived as information on the nature of the goods or the standard packaging/labelling for the goods, would therefore not enable the relevant consumer to distinguish the applicant’s goods from competing goods on the market i.e, the goods of any coatings business. The adjective ‘premier’ was laudatory and promotional and was not distinctive for these goods and many others.

4. After an extension to the time-limit, the applicant replied on 19 January 2015, contesting the examiner’s provisional refusal arguing in essence, as follows:

• The examiner has erred in the assessment of the distinctive character of the mark as the examiner has split the mark up into its component parts and has analysed each element in turn, but has failed to consider the overall impression conveyed by the mark as a whole.

• For the elements of the mark which have been considered, the examiner has not considered the impression given by each element in the context of the other elements appearing in the mark.

• The examiner has failed to consider and/or give sufficient weight to the stylistic and figurative elements and features of the mark which imbue it with distinctive character.

• An identical trade mark has been accepted and registered without objection for identical goods by the United Kingdom Intellectual Property Office.

5. On 16 February 2015, the examiner issued a final refusal (‘the contested decision’) refusing the mark applied for in its entirety pursuant to Article 7(1)(b) and 7(2) CTMR.

6. The examiner argued, in essence, as follows:

• The Office and the applicant agree that ‘premier’ may be used in a laudatory sense or to denote quality and that ‘LTD’ is descriptive of a business. Furthermore, the applicant agrees with the Office that the relevant consumer includes both the average consumer and the professional. The Office does not agree that the average consumer of coatings and related products would need to do further research to ascribe the nature of the products in question, much less the professional consumer for coatings, particularly when set against the products in question. While the Office acknowledges that the word ‘LTD’ denotes a commercial origin, the mark as a whole clearly does not enable the relevant to distinguish one competing coatings business or undertaking from another on the relevant market. An added identifier is required in order to serve that function. The common expression on its own does not have the minimum level of distinctiveness necessary to be memorable.

• The stylisation and figurative elements appear as a straightforward label. The deliberate simplicity of these elements is fully acknowledged by the applicant.

• The mark as whole simply gives information about the refused goods, namely that they are, contain, or are related to coatings, and it does so in a way that is appealing and indeed promotional. The Office assessed the goods individually. The objected goods all clearly pertain to, or are, coatings and according to 15/02/2007, C‑239/05, The Kitchen Company, EU:C:2007:99, § 38, the Office was thus free to use only general reasoning.

• The applicant submitted evidence with a view to demonstrating that the mark is not descriptive and did not trigger the operation of Article 7(3) CTMR, though the evidence would not suffice to establish acquired distinctiveness in the event that Article 7(3) CTMR had been triggered.

• The size and positioning of the wording and device in relation to the presentation and packaging of the relevant goods was also taken into account. It must be taken into account that when the verbal element is descriptive, the figurative elements should be striking enough to be able to divert the consumer’s attention away from the non-distinctive message or require an interpretive effect to divine the meaning of the word element. Here the words are clear and the device in the circumstances is banal. It is too simple a decoration to divert attention away from the straightforward verbal message.

• As regards the UKIPO registration referred to by the applicant, the Office is not bound by such decisions (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

7. On 16 April 2015, the applicant filed an appeal against the contested decision, followed by a statement of grounds on 24 April 2015.

8. The appeal was remitted to the Boards pursuant to Article 61(2) CTMR on 5 May 2015.

Grounds of appeal

9. The applicant requests the annulment of the contested decision and the registration of the contested mark in its entirety. Alternatively that the Board allow the registration of the mark in part, or the remittal of the application to the first instance in order to examine the mark under Article 7(1)(c) CTMR, giving the applicant the opportunity to file evidence of acquired distinctiveness under Article 7(3) CTMR. Its arguments may be summarised as follows:

• The applicant denies having acknowledged or agreed that the word ‘premier’ is laudatory. The applicant does, however, admit that the element ‘LTD’ in isolation is descriptive and references a company.

• The applicant agrees with the dictionary definition provided by the examiner in the letter dated 17 September 2014, namely that ‘premier’ is an adjective which means ‘first in importance, rank, etc.’. However, this is not a word which has a direct meaning in relation to the Class 2, 17 and 19 goods of the application or indeed in relation to goods in general. The word ‘premier’ is unusual in its use in English.

• Where there is a clear pattern of allowing the registration of trade marks comprising a particular word, then the applicant is entitled to expect equal treatment for a new application which conforms with the established practice. In this regard the applicant makes reference to a variety of previously registered Community trade marks, all of which were registered without any proof of acquired distinctiveness, namely:

CTM No 151 464 ‘PREMIER’ (stylised), CTM No 877 183 ‘PREMIER’ (stylised), CTM No 1 041 698 ‘PREMIER’ (stylised), CTM No 1 159 482 ‘PREMIER PITS’, CTM No 2 146 710 ‘PREMIER TECH’, CTM No 2 657 773 ‘PREMIER TAX FREE’ (stylised), CTM No 2 779 858 ‘PREMIER’ (stylised), CTM No 3 010 261 ‘PREMIER’ (stylised), CTM No 3 985 348 ‘PREMIER’ (stylised), CTM No 4 956 694 ‘PREMIER PLUS’ (word mark), CTM No 4 283 255 ‘PREMIER CONSULTING’ (word mark), CTM No 5 165 741 ‘PREMIER EXCESS’ (word mark), CTM No 7 595 564 ‘PREMIER CLEAN’ (word mark), CTM No 8 463 291 ‘PREMIER TRAVEL’ (word mark), CTM No 8 509 606 ‘PREMIER MODEL’ (word mark), CTM No 8 709 925 ‘PREMIER’ (word mark), CTM No 12 034 872 ‘PREMIER GRIP’ (word mark), CTM No 11 855 897 ‘PREMIER’ (stylised), CTM No 13 248 638 ‘PREMIER’ (word mark).

• In addition the following registrations have been allowed by the UK and Irish Trade Mark Registries, namely:

UK TM registration No 2 063 659 ‘PREMIER’ (stylised), UK TM registration No 2 120 508 ‘PREMIER PARTNERSHIP’ (word mark), UK TM registration No 2 123 966 PREMIER (word mark), UK TM registration No 2 196 0501 ‘PERMIER’ (word mark), UK TM registration No 2 275 789 ‘PREMIER PITS’ (word mark), UK TM registration No 2 536 833 ‘PREMIER FOODS’ (word mark), UK TM registration No 2 548 882 ‘PREMIER MEDIA’, UK TM registration No 2 571 930 ‘PREMIER SPORT’, UK TM registration No 2 475 730 ‘PREMIER PENSIONS’, Irish TM registration No 109 554 ‘PREMIER’ (word mark), Irish TM registration No 101 580 ‘PREMIER’ (word mark), Irish TM registration No 228 307 ‘PREMIER CARPETS’ (word mark), Irish TM registration No 165 186 ‘PREMIER MOLASSES’.

• The applicant has successfully registered the mark applied for in the United Kingdom as UK trade mark registration No 2 644 784.

• These registrations reinforce the clear practice that ‘premier’ is not a wholly descriptive term and alludes to the qualities of a product rather than being wholly descriptive of them.

• In relation to the word ‘coatings’, it is important that the word is ‘coatings’ (plural) rather than ‘coating’ (singular). Placing ‘premier’ in conjunction with ‘coatings’ in ‘Premier Coatings’ leads to a combination which immediately gives the consumer of the relevant products a suggestion that the products are from an entity called ‘Premier Coatings’. This is in fact the case since the products are products of ‘Premier Coatings Limited’, a subsidiary of Winn & Coales International Limited. The applicant attached an excerpt showing the company name registration.

• The public will see the mark applied for as indicating the name of the company that is a supplier of the products, rather than indicating the nature or quality of the products. ‘Premier Coatings’ (plural) is far more likely to be seen as the name of the company than ‘Premier Coating’ (singular).

• Whilst the applicant does admit that the word ‘Ltd’ is in isolation descriptive and non-distinctive, in the context of the mark as a whole, it is undeniable that ‘Premier Coatings Ltd’ will be seen by a consumer as an indication of the name of the company supplying the products, rather than a description of the products themselves. The use of ‘Ltd’ clearly indicated it is a company name. The consumer will see that the sign functions as a trade mark by indicating the origin of the products.

• The graphic element of the mark is not simply a border surrounding the words ‘Premier Coatings Ltd’, but also comprises open-ended bands extending to the left and right of the border. The examiner suggests that the applicant has made an acknowledgement of deliberate simplicity which would lead to the conclusion that the graphic elements are ‘in a straightforward label’. This is denied; the graphic elements are an important part of the sign as a whole and reinforce the identity of the sign as a badge of origin; a trade mark which distinguishes the goods of the application from those of others.

• For the purposes of argument only, taking the graphic element in isolation, the graphic element has no meaning in relation to the goods covered by the application and is an invented stylised element which would be capable of registration if the applicant filed for this graphic element alone. The guidance given in the case-law mentioned must be remembered and using the words of paragraph 25 of appeal No R 1641/2007-2 (09/10/2008, T‑1641/2007‑2, DVB (fig.), the graphic element is by itself ‘a sign represented in a fanciful and arbitrary manner with a sufficient degree of stylisation…’. True that the degree of creativity embodied by the design is arguable not high. Nevertheless, registration of the trade mark is not subject to a specific level of linguistic or artistic creativity.

• The examiner does not appear to have followed the guidelines for Examination of the Office, Part B-Examination pages 60-61 of the English version, and hence has come to the incorrect conclusion that ‘the device in the circumstances is banal’. The correct test to be applied is as follows:

• The design should not consist of a non-distinctive combination of basic/simple banal shapes/figures/designs, geometric or not. In this case, the addition of two fanciful band elements extending outwardly on either side of the box with rounded edges are capricious elements of the design, not routine or regular.

• The design does not consist of a common/non-distinctive label – again the bands which are capricious elements of the design would not be found in a normal label.

• The design is not a common trade mark for the Class 2, 17, and 19 products – there is no suggestion of this.

• The design is a pattern and can be easily recognised and memorised by the relevant public; the open-ended bands are distinctive and stick in the mind of the viewer.

• The design does not comprise decorative or functional features; this does not apply, since the mark is not a design of the articles themselves, but a design of a logo to be applied to the articles and their packaging.

• The design does not consist of a non-distinctive two-dimensional representation of a container or packaging.

• The design does not consist of a non-distinctive representation of the external appearance or silhouette of the goods. The design does also not consist of a two-dimensional representation of the place/space/area/location where the goods are sold/provided/distributed/displayed.

• Applying this test leads to the conclusion that the design is a distinctive element, and therefore, the mark comprising the design should be capable of registration.

• The examiner does not appear to have paid any attention to the fact that the word ‘PREMIER’ is presented in a specialist type script, with the ‘take’ of the ‘P’ extending downwardly to a level coincident with the bottom parts of ‘coatings ltd’. It is unusual that the word ‘premier’ is presented in lower-case in the sign. It is unusual that the dot above the ‘I’ interrupts and extends through and above the top part of the box in which the words are located. The relative sizing of ‘premier’ versus ‘coatings ltd’ is a deliberate design choice in the sign and a distinctive feature of the sign. None of these factors appear to have been considered by the examiner.

• The examiner has fallen into error by not giving adequate consideration to the impression given by the trade mark as a whole. Examples of how the trade mark is, and has been used, were attached. From these it can be seen that the sign is used in a way that clearly indicates trade origin and in the examples given it can clearly be seen that the mark will be perceived by the consumer as indicating the supplier of the relevant goods, and therefore, as functioning as a badge of trade origin. Whilst the evidence is not submitted as evidence of reputation in this case, the evidence does show that the suggestion that the mark is devoid of distinctive character must be incorrect, since it can be seen from the evidence that the mark in use clearly does in fact function as a sign which indicates the origin of products.

• The examiner has not conducted a detailed analysis of the goods covered by the application. This is relevant since whilst, for example, apple is descriptive of fruits and not for computers, ‘coatings’ has a meaning in relation to surface coatings, but does not have any meaning in relation to other goods. Hence, the mark can have no descriptive meaning for any of the following goods:

Class 2 – Anti-corrosive boards; anti-corrosive papers;

Class 17 – Insulating sheers and boards; expansion joint fillers; expansion joint fillers for bridges; expansion joint fillers for pavements; fillers for joint packing; fillers for panel joints; insulating fillers; joint sealing compounds; mastic for sealing joints; articles made of rubber for sealing; articles of rubber for use in sealing pipes; non-metallic sealing compounds for joints; pipe jointing compounds for sealing cracks; pipe jointing compounds for sealing pipe threads; sealants for sealing joints; sealing compounds; sealing compounds for stopping leakage from oil tanks (other than chemicals); sealing compounds (mastics); sealing elements consisting of rubber; sealing putty; waterproof membranes for use in manufacture; waterproof members of rubber;

Class 19 – Epoxy grout.

• Whilst it is true that the applicant’s products can be bought by the specialist trade and also by the general public (although it is more often the case that the products are bought by specialist trade), it cannot be ignored that the products themselves are specialist in nature and are not everyday consumer products. The products are essentially anti-corrosive products to be used to prevent weathering and deterioration of, for example, metal pipelines, piers in marine environments, storage tanks, etc. The technical and specialist nature of the goods is a relevant factor in deciding whether the mark applied for is distinctive for the goods. For such goods the consumer will expect them to be made by a specialist manufacturer and will pay due attention. In this case, the name of the manufacturer is incorporated in, and is part of, the trade mark used to identify the goods.

Reasons

10. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible.

11. However, the appeal is unfounded for the reasons given below.

Article 7(1)(b) CTMR

12. Pursuant to Article 7(1)(b) CTMR, signs which are devoid of any distinctive character, i.e. signs that are unable to distinguish the contested goods or services of one undertaking from those of other undertakings, shall not be registered (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 60). The trade marks referred to in this provision are unable to perform the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

13. According to settled case-law, the distinctiveness of a mark within the meaning of that Article means that the mark serves to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. According to settled case-law, such distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 23).

14. Furthermore, according to Article 7(2) CTMR, ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

The relevant public

15. In the present case the goods at hand consist, as stated by the applicant, of products which are essentially anti-corrosive products or used to prevent weathering and deterioration, they are specialist in nature and are not everyday consumer products. These products are likely to be aimed at a specialised public consisting of professionals as well as informed average consumers who are likely to undertake a variety of DIY projects. Given the specialised nature of the goods and the application of them, the level of attention displayed by this public is high.

The sign

16. The contested sign consists of the word components ‘PREMIER COATINGS LTD’ presented in two different sizes of typeface, one in bold, arranged with the word ‘PREMIER’ above the word components ‘COATINGS LTD’ with the letter ‘P’ extending down to the bottom of the words underneath it, all inserted into a rectangle with rounded corners from which two parallel lines protrude on either side.

17. As correctly defined by the examiner in the contested decision the word components contained in the mark are English words, ‘PREMIER’ as an adjective meaning: ‘First in importance, rank or position; chief, leading, foremost.’ http://www.oed.com/view/Entry/150287?rskey=nOsJfm&result=1&isAdvanced=false#eid , ‘COATINGS’ which in singular is defined as: A layer of any substance spread or covering a surface’ http://www.oed.com/view/Entry/35158?redirectedFrom=Coatings#eid, and ‘LTD’ which is a generic abbreviation used to indicate a ‘limited liability company’ http://www.oed.com/view/Entry/108491#eid39200069.

18. As a main rule the mere combination of several descriptive terms remains essentially descriptive. The only exception is where the unusual nature of the combination of word elements creates an overall impression which is sufficiently far removed from that produced by the mere combination of its constituent elements, thereby making the resulting compound term more than the mere sum of its parts (19/04/2007, C‑273/05 P, Celltech, EU:C:2007:224, § 76,78).

19. The construction of the word components in the contested mark, however, comply with English grammar rules as it consists of an adjective combined with two nouns which are juxtaposed in accordance with normal parlance and usage. As such, the word components in the mark, when viewed in their entirety merely indicate ‘layers of any substance which can be spread or cover a surface, which are of a particularly high quality and are provided by an entity with limited liability’.

20. As such there is nothing unusual about the combination of the word elements in the contested mark, so as to make the resulting compound term more than the mere sum of its parts.

21. When viewed in the context of the goods applied for as listed in paragraph 1, which all can be described as coatings or products which can be particularly well suited for use with such surface treatments, the word components contained in the mark clearly convey a descriptive and non-distinctive message, namely that these products either are, or are well-suited for, layers of any substance which can be spread or cover a surface, are of a particularly high quality and are provided by an entity with limited liability.

22. The applicant’s arguments, that the word component ‘PREMIER’ is merely allusive, that the usage of ‘COATINGS’ in a plural form, or that the addition of the abbreviation ‘LTD’ to an otherwise descriptive/non-distinctive construction, results in a distinctive mark allowing consumers to discern the commercial origin of the goods to which it is applied are not convincing.

23. The Board notes, that the applicant has not contested the definitions of the individual word components, as set out by the examiner in the contested decision.

24. It follows from the very definition of the word component ‘PREMIER’ that it is an adjective which is laudatory in nature. For these very reasons the Board has previously held that it is, in certain contexts such as the present one, non-distinctive (see, for example, 19/10/2005, R 429/2015-2, PREMIER TAX FREE and 10/04/2013, R 1162/2012-5, PremieR (fig.) and the reasons contained therein). Furthermore the Board notes that the applicant has not identified in which way it would be perceived as allusive, but merely stated that it is ‘unusual in the English language’.

25. The utilisation of the plural form of the word ‘COATING’ in the mark, merely indicates a plurality or variety of the coatings concerned, it does not conceptually or structurally, contrary to the applicant’s assertions, endow the mark with any distinctive character.

26. Finally, it follows from the Companies Act of 2006, section 59(1), that a limited company that is a private company in the United Kingdom, as a main rule, is required to use the abbreviation ‘LTD’ following the name of the company. As such consumers will attribute little or no significance to that component of the mark as an identifier of commercial origin as it, because of its very nature, merely conveys information regarding the liability of the entity concerned. For these reasons the addition of ‘Ltd’ cannot lead to a practice in which any obviously descriptive or non-distinctive term can be registered as a trade mark, as consumers, when confronted with such marks are unlikely to perceive them as identifiers of commercial origin.

27. The message conveyed by the word components in the mark to the relevant consumer is, thus, exclusively descriptive in nature and as such will make no impression on these consumers with regards to the commercial origin of the goods to which the mark is affixed (to this effect, see also, 13/10/2009, R 387/2009-2, ECO LTD (fig.), 17/01/2007, R 906/2006-1, ASSURED GUARANTY LTD).

28. The applicant further argues that the graphic representation of the mark is such that, when viewed as whole, it endows the mark with distinctive character.

29. Initially the Board notes, as correctly stated by the applicant, that the registration of the trade mark is not subject to a specific level of linguistic or artistic creativity (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 41). However, it follows from that very same decision, that a trade mark should, nevertheless, enable the relevant public to identify the origin of the goods protected thereby and to distinguish them from those of other undertakings.

30. It is further settled case-law that, if a component which is devoid of any distinctive character is the dominant element of that mark, whereas the other figurative and graphic elements of which it is composed are ancillary and do not possess any feature, in particular in terms of fancifulness or as regards the way in which they are combined, then the trade mark applied for as a whole is devoid of any distinctive character and must be refused registration (18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 45)

31. In the present case, the graphic elements of the mark, as described above, consists of descriptive word components presented in two different font sizes in the same typeface, one in bold, arranged with the word ‘PREMIER’ above the word components ‘COATINGS LTD’ with the letter ‘P’ extending down to the bottom of the words underneath it, all inserted into a rectangle with rounded corners from which two parallel lines protrude on either side.

32. The graphic elements thus result in a banal and simplistic graphic expression which, considering the symmetrical nature of the frame in which the word components are presented, as well as the lines protruding from it, bears a strong resemblance to a wide variety of generic labels which consumers are accustomed to as mere decorative features and as such are considered to be merely ancillary in nature.

33. When confronted with the mark consumers are, therefore, given the dominant position of the descriptive and non-distinctive word components contained therein, likely to solely deduce a descriptive meaning from it, rather than perceive it as an indication of commercial origin (see also 11/07/2012, T‑559/10, Natural beauty, EU:T:2012:362, § 25).

34. With regard to the previous registrations to which the applicant has referred as listed in paragraph 9, the Board notes that the Office should strive for consistency and apply the same criteria to the examination of trade marks. However, it follows from T‑554/12, § 65, (27/03/2014, T‑554/12, Aava Mobile, EU:T:2014:158, § 65) that the Board of Appeal cannot be bound by first-instance decisions, in particular when these have not been appealed.

35. Furthermore, pursuant to settled case-law, decisions concerning the registration of a sign as a CTM are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a CTM must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of previous Office practice or that of the Boards of Appeal.

36. Moreover, market practices, languages and registration practices evolve over time and some of the marks cited may, therefore, have been accepted as they were considered to be registrable at the time of application, which however may not be the case nowadays. Moreover, where marks are in fact registered contra legem, a system is in place to deal with such cases, namely that of cancellation proceedings.

37. Regarding the national registrations from the UK and Irish Trade Mark Offices, including the applicant’s UK trade mark registration No 2 644 784, it is sufficient to recall, that the Community trade mark regime is an autonomous legal system with its own objectives which are peculiar to it; it applies independently of any national system. Accordingly, the registrability or protectability of a sign as a Community trade mark is to be assessed on the basis of the relevant EU legislation alone. Consequently, neither OHIM nor, as the case may be, the Courts of the European Union are bound by decisions adopted in a Member State, or a third country, finding a sign to be registrable as a national trade mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated. (29/03/2012, T‑242/11, 3D eXam, EU:T:2012:179, § 44).

38. The applicant further argues, that the word component ‘coatings’ contained in the mark cannot be descriptive for the following goods ‘anti-corrosive boards; anti-corrosive papers’ in Class 2, ‘insulating sheers and boards; expansion joint fillers; expansion joint fillers for bridges; expansion joint fillers for pavements; fillers for joint packing; fillers for panel joints; insulating fillers; joint sealing compounds; mastic for sealing joints; articles made of rubber for sealing; articles of rubber for use in sealing pipes; non-metallic sealing compounds for joints; pipe jointing compounds for sealing cracks; pipe jointing compounds for sealing pipe threads; sealants for sealing joints; sealing compounds; sealing compounds for stopping leakage from oil tanks (other than chemicals); sealing compounds (mastics); sealing elements consisting of rubber; sealing putty; waterproof membranes for use in manufacture; waterproof members of rubber’ in Class 17, as well as ‘epoxy grout’ in Class 19 as the word has no meaning in relation to these goods.

39. However all the ‘fillers’, ‘putty’ and ‘sealing compounds’ mentioned can in fact create ‘a layer […] spread or covering a surface…’ thereby making them ‘coatings’, and for the remainder of the goods listed, this word component can state merely that the goods are particularly well suited for use with various coatings, for example by having such chemical or physical attributes so as to not affect the efficiency or function of a given coating adversely.

40. For the reasons stated above, the Board finds that, for the goods ‘anti-corrosive waxes; anti-corrosive preparations; anti-corrosive compositions; anti-corrosive substances; anti-corrosive agents; anti-corrosive products for metals; anti-corrosives and anti-corrosive compounds; anti-rust products and preparations; coating preparations and materials; sealing preparations; sealing compositions in the nature of paint; protective coatings with sealing qualities for use on metals [paints]; paints, varnishes, lacquers, colourants and dyestuffs; epoxy coatings; epoxy primers; epoxy resin coatings; anti-corrosive and fire retardant coatings; anti-corrosive coatings (paints); anti-corrosive compounds as additives to surface coatings; coating compositions in the nature of paint for industrial applications; coating compositions having waterproofing properties (paints or oils); coating compositions in the nature of oils; coating compositions in the form of paint; coating of plastics to protect metal against damp (paints); coating preparations for protection against rust; coating preparations for protection against friction; coating preparations for protection against wear; coating substances made from bitumen (paint); coatings being inorganic (paints or oils, other than building materials); coatings being intumescent (paints or oils, other than building materials); coatings for use as primers; corrosion inhabitants in the nature of a coating; corrosion resistant coatings; elastomer waterproof coating preparations (paints); exterior surface protective coatings; industrial coatings in the nature of paint; liquid plastics surface coatings (paints) for protection against moisture; liquefied plastics in the nature of paints for use as surface coatings; non-metallic coating materials (paints); organic coatings (paints); preparations for coating surfaces to protect against abrasion; preparations for coating surface to protect against corrosion; preparations for use as waterproofing coatings on the surfaces of structures; protective coating compositions (paints); protective coating materials in the nature of paint; protective coatings for application in liquid form for use on metals; protective coatings for metals (paints); protective coatings in the form of sprays for use on metals (paints); protective coatings (paints) for concrete forms; protective surface coatings for metals; protective surface coatings (paints); protective surface coatings for wood; resinous coatings; resins for coating purposes; rubber coatings in the nature of paint; rust preservatives in the nature of a coating; rust preventatives in the nature of a coating; protective sealant for pipes; protective coatings for application in liquid form for use on concrete; spray coatings (lacquers); spray coatings (paints); spray coatings (varnishes); stabilising preparations in the nature of coatings; stone sealer coatings; surface coatings in the nature of paint; thinners for coatings; tints for surface coatings; water-based metallic coatings in the form of sprays and liquid gels; waterproof coatings (paints); weather resistant coatings (paints); weatherproofing coatings (paints) for concrete; weatherproofing coatings (paints); fillers and filler materials in the nature of paint; primer fillers in the nature of paint; protective coatings with sealing qualities for use on metals (paints); sealing compositions in the nature of paint; sealing liquids (preservatives) for wood; sealing preparations (paint); weather sealing stains; primers; primer compounds; sealant primers; coatings for waterproofing (except chemicals); coatings in the nature of industrial sealants; elastomer waterproof coating preparations; non-metallic waterproofing materials in the nature of paint; preparations for waterproofing (paints); protective coatings for waterproofing surfaces of buildings (paints); waterproofing compounds (paint); bitumen varnish’ in Class 2, ‘insulating materials; semi-finished and semi-processed plastics and artificial resin products; insulating coatings; insulatory coatings of plastic resin; oil-tight synthetic resin coatings for the surface sealing; protective acrylic coatings in the form of paints for insulating purposes; protective acrylic spray coatings for insulating purposes; insulating adhesives; adhesive sealant and caulking compound; adhesive sealants for general use; insulating adhesives; expansion joint fillers; expansion joint fillers for bridges; expansion joint fillers for pavement; fillers for joint packing; fillers for panel joints; insulating fillers; caulking compounds for sealing cracks; insulations with sealing functions for heat protection; joint sealing compounds; mastic for sealing joints; non-metallic sealing compounds for joints; paints for sealing (insulating); pipe sealing compositions; pipe jointing compounds for sealing cracks; pipe jointing compounds for sealing pipe threads; sealants for sealing joints; sealing compounds; sealing compounds for stopping leakage from oil tanks (other than chemicals); sealing compounds (mastics); sealing putty; mastic compositions for sealing and jointing; waterproof sealants; polymer fibres for use in bitumen’ in Class 17, and ‘epoxy grout; pitch epoxy based surfaces for roads; bitumen substances for coatings; coatings (building materials); liquid plastics surface coatings for protection against moisture (not paints); mastic asphalt; rubberized asphalt primer; bituminous products in the form of membranes for waterproofing; flashings (non-metallic) for waterproofing buildings; waterproof bituminous membranes reinforced with glass fibre; bitumen; bitumen based compositions; bitumen emulsion; bitumen latex emulsions for construction purposes; bituminous sealing membranes’ in Class 19, that the mark lacks the necessary distinctive character, as consumers will merely perceive it as a non-distinctive/descriptive indication, communicating that these goods are ‘layers of any substance which can be spread or cover a surface, are of a particularly high quality and are provided by an entity with limited liability’.

41. For the goods ‘anti-corrosive bands; anti-corrosive papers’ in Class 2, and ‘insulating sheets and boards; adhesive anti-slip tape for flooring applications; adhesive masking tapes (other than for household or stationery purposes); adhesive tape for industrial and commercial use; adhesive tapes; anti-corrosion tape; duct tape; insulating tapes; pipe joint tape; plastics tape (other than for medical or stationery use); rubber tape for insulating; sealing tape of rubber (other than for household or stationery use); self-adhesive tapes (other than for stationery, household or medical purposes); strapping tape; tape (insulating); tapes for insulating purposes; tapes of epoxy impregnated fibreglass for insulating; polyester tape (other than for medical or stationery use); fabrics made from polyester for use as insulation; adhesive materials in the form of strips [other than for household, medical or stationery use]; adhesive materials in the form of bands [other than for household, medical or stationery use]; adhesive sealing strip for roofing joints; articles made of rubber for sealing; articles of rubber for use in sealing pipes; pipe linings (non-metallic) for sealing pipes; sealing elements consisting of rubber; sealing tape for use with insulated glass; sealing tape (other than for household or stationery use); waterproof membranes for use in manufacture; waterproof or insulating packing; waterproof packings; waterproof membranes of rubber; cylinder jackets; insulation jackets for industrial pipes; jackets (insulating) for pipes; jackets (insulating) for tanks; non-metallic insulated pipe jackets; non-metallic insulated pipe jacket muffs; pipe jackets, not of metal; thermal insulation jackets for valves; thermal insulation jackets for industrial plant’ in Class 17, the mark lacks distinctive character as consumers will merely perceive it as a non-distinctive message, indicating that the goods in question are well-suited for layers of any substance which can be spread or cover a surface, for example by having such chemical or physical attributes so as to not affect the efficiency or function of a given coating adversely, are of a particularly high quality and are provided by an entity with limited liability.

42. In spite of the high level of attention displayed by the relevant professional and average consumers it is, based on the above, unlikely that they will perceive the contested mark as an indication of commercial origin but rather as an essentially descriptive/non-distinctive message indicating vital information regarding the products to which the mark is affixed. The material provided by the applicant, namely printouts showing the use made by the applicant and the registration of the mark as a company name, does not give rise to a different assessment.

43. The Board, therefore, finds that the examination of the contested mark was conducted correctly and in full, contrary to the applicant’s assertions, the examiner gave adequate consideration to the mark as whole in the context of the goods applied for. The decision, therefore, was correct in its findings, consequently, the appeal must be dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed Th. M. Margellos

Registrar: Signed H.Dijkema