DECISION

of the Fifth Board of Appeal

of 13 April 2016

In Case R 1416/2015-5

Turning Point Propellers, Inc.
11762 Marco Beach Drive, Suite 2 Jacksonville Florida 32224 United States	Applicant / Appellant

represented by MEISSNER, BOLTE & PARTNER GBR, Widenmayerstraße 47-50, DE‑80538 München, Germany

APPEAL relating to European Union trade mark application No 13 597 117

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 20 December 2014, Turning Point Propellers, Inc. (‘the applicant’) sought to register the word mark

EXPRESS

for the following list of goods and services:

Class 12 - Propellers for marine vehicles.

2. On 12 January 2015, the examiner notified the applicant that the trade mark was in part not eligible for registration under Article 7(1)(b), (c) and 7(2) of the European Union Trade Mark Regulation (EUTMR), namely for the above goods. The examiner’s arguments can be summarised as follows:

• The goods covered by the mark applied for are both mass consumption and specialised products. They are aimed both at the average consumer and a professional public. The awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect whilst it will be high for the professional public.

• Since the word ‘EXPRESS’ is a word that will be understood in English, French, German, Slovak, Spanish and Swedish, the relevant public is the consumer in the European Union who speaks the abovementioned languages.

• The trade marks consists of the word ‘EXPRESS’ with the following meaning:

• An express train, bus, etc. makes a particular trip more quickly than ordinary trains, buses, etc. (ref. Macmillan dictionary).

• Synonyms: fast, quick, rapid, high-speed, speedy.

• The word has the same meaning in French, German and Swedish. In Slovak the word is spelled EXPRES and in Spanish it is spelled EXPRÉS. The mark will be pronounced and understood as having the same meaning as mentioned above.

• The word ‘EXPRESS’ immediately informs consumers without further reflection that the goods applied for are fast moving propellers. Therefore, the mark conveys obvious and direct information regarding the nature and quality of the goods in question.

• The relevant public would perceive the word ‘EXPRESS’ as a promotional laudatory message and will not tend to perceive in the sign any particular information as to the commercial origin.

3. The applicant submitted its observations on 12 March 2015, which can be summarised as follows:

• The Office has not provided a printout of the definition regarding the term ‘EXPRESS’ as allegedly found in the Macmillan Dictionary and therefore the applicant is unable to fully reconstruct the objections. The lack of accuracy may constitute an infringement of Article 75 EUTMR.

• The applicant denies that the term will be interpreted with the same meaning as given by the examiner. The word ‘EXPRESS’, when used as an adjective basically has three meanings:

• ‘said or given in a clear way’;

• ‘of a particular kind’;

• ‘travelling at high speed with few stops’.

• The applicant provides additional definitions of the word according to the online dictionary Merriam-Webster (Annex 1). None of the meanings listed have anything of do with the goods at issue.

• The term ‘EXPRESS’ has a large variety of meanings and cannot mean ‘fast, quick, rapid, high-speed’; moreover, the mark is applied for as a stand-alone term, hence, it is highly unlikely that the relevant public will interpret ‘EXPRESS’ as having the above meaning.

• Regarding the goods, the relevant public is only composed of professionals.

• The term ‘EXPRESS’ is not used in common parlance by EU-based specialists or experts in the shipbuilding industry to designate ‘propellers for marine vehicles’; therefore, it is highly fanciful.

4. By decision of 21 May 2015 (“the contested decision”), the examiner refused the application for goods in Class 12. In the decision the examiner upheld the grounds for refusal that had been established in the earlier communication, with primarily the following additions:

• The decision has been properly substantiated as a clear reference to the Macmillan Dictionary was made. It is not essential to attach printouts of dictionary definitions since they can easily be accessed online.

• ‘The word ‘EXPRESS’ will in relation to any kind of vehicle, or vehicle part that in some way have an effect on its speed, be perceived as something fast and speedy’. In the present case, a propeller of a marine vehicle will have an effect on its speed.

• Even if the word ‘EXPRESS’ is often defined as ‘travelling at high speed with few stops’, it cannot be denied that most people would perceive the word as a simple reference to something that runs faster than usual, be it a boat, a train or a lawn mower.

• The message of the mark is direct, clear and impossible to miss.

• Propellers can be purchased by the average private boat owner; there is nothing that indicates that the goods at issue are exclusively used in the shipbuilding and boatbuilding industry.

• The examiner submits two EUTM applications consisting of the word ‘EXPRESS’ for goods in class 12, which have been refused (No 9 912 791 and No 11 831 112).

5. On 20 July 2015, the applicant filed a notice of appeal against the contested decision and submitted its statement of grounds on 14 September 2015.

6. Pursuant to Article 61 EUTMR, the appeal was submitted to the Examination Division for revision. The appeal was remitted to the Board of Appeal on 22 September 2015.

Grounds of appeal

7. The applicant requests that the contested decision be annulled and that the trade mark applied for be registered for the goods in question. Additionally, the applicant requests a date for an oral hearing. The applicant argues as follows:

• The applicant considers that the contested decision infringed its right to a fair hearing and a fair proceeding and the obligation to properly substantiate the decision because the examiner did not provide a printout of the definition regarding the term ‘EXPRESS’. Therefore it is impossible to fully reconstruct the statement.

• Furthermore, the definition given by the examiner cannot be retraced since the definitions ‘swift; fast’ are not mentioned in the Macmillan dictionary available online.

• The word ‘EXPRESS’ possesses a large variety of meanings; regarding the Macmillan dictionary (Annex A1), none of the alleged meanings presented in the contested decision can be found in this list.

• The goods ‘propellers for marine vehicles’ are exclusively used in the shipbuilding and boatbuilding industries. The average consumer does not regularly build or manufacture ships and boats where the goods in question are needed. The specialists will be more attentive.

• The attentive potential consumer will not realise that the trade mark ‘EXPRESS’ in relation to ‘propellers for marine vehicles’ is used in connection with ‘swift; fast’.

• Even the meaning ‘direct or fast; used for direct or high speed travel; swift, fast’ is not descriptive for the goods at issue. Indeed, ‘propellers for marine vehicles’ are not ‘fast’, they are spinning. The speed of the marine vehicle is more a result of the motor power than a result of the propeller.

• The term ‘EXPRESS’ is for ‘propellers for marine vehicles’ an unusual term which is at most elusive but not descriptive.

• The mark is ambiguous and vague and can become descriptive only when it is used in combination with additional words.

• Moreover, the applicant owns an identical trademark which was registered by the United States Patent and Trademark Office on 16 January 2001. This prior registration demonstrates that the English-speaking consumer will be able to perceive the sign as an indication of commercial origin.

• The contested decision is arbitrary since the Office has not considered that several similar EUTM’s have been registered.

Reasons

8. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 EUTMIR and is, therefore, admissible.

Article 7(1)(c) EUTMR

9. Pursuant to Article 7(1)(c) EUTMR, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate inter alia the kind, quality or intended purpose of the goods or services shall not be registered.

10. In order for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40, as confirmed by the judgment of 05/02/2004 in Case C-150/02 P, Streamserve, EU:C:2004:75, and judgment of 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

11. Article 7(1)(c) EUTMR pursues an aim in the public interest, namely that descriptive signs or indications relating to the characteristics of the goods or services in respect of which registration is sought may be freely used by all. That provision, therefore, prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 35, 36; 04.05.1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 25).

12. In accordance with Article 7(2) EUTMR, a trade mark application may be refused notwithstanding that the grounds of non-registrability of Article 7(1) EUTMR obtain in only part of the European Union.

13. Only indications that are directly descriptive are ineligible for registration pursuant to Article 7(1)(c) EUTMR. The sign in question does not necessarily already have to be known as a descriptive indication; it is instead enough if this can reasonably be expected in the future. Therefore, the examiner does not have to demonstrate that the sign applied for is commonly used in business communications and, in particular, in advertising (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46).

14. The descriptive character of a mark must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of the public concerned, which consists of the consumers of these goods or the recipients of these services (02/04/2008, T-181/07, Steadycontrol, EU:T:2008:86, § 38; 21/05/2008, T-329/06, E, EU:T:2008:161, § 23).

Relevant Public

15. Whether a sign is descriptive may only be assessed, first, in relation to the understanding of the sign by the relevant public and, second, in relation to the goods or services concerned (see judgment of 09.07.2014, T-520/12, Gifflar, EU:T:2014:620, § 18).

16. The applicant disagrees with the examiner’s assessment; the applicant states that the relevant public is only composed of professionals.

17. Contrary to the contested decision the Board does not consider the goods ‘propellers for marine vehicles’ mass consumption products.

18. The relevant public is composed, on the one hand, of professionals and, on the other, of consumers who are boat owners and need professional advice or assistance; they must be particularly aware. The degree of attentiveness of consumers and professionals is regarded to be high.

19. Since the word ‘EXPRESS’ is a word that will be understood in English, French, German, Slovak, Spanish and Swedish, the relevant public is the consumer in the European Union who speaks the abovementioned languages.

Descriptive character of the trade mark

20. The trade mark applied for consists of the word ‘express’, which has several meanings, as has been showed by the applicant. The term can be an adjective, an adverb, a noun or a verb.

21. The contested decision retained the following meanings: ‘An express train, bus, etc. makes a particular trip more quickly than ordinary trains, buses, etc.’ (extracted from the online Macmillan dictionary) and ‘fast, quick, rapid, high-speed, speedy’ as synonyms.

22. The applicant claims that the Office has to provide printouts of the dictionary definition and considers that its right to a fair hearing and a fair proceeding and the obligation to properly substantiate the decision have been infringed.

23. It is true that in the provisional refusal of 12 January 2015, the synonyms are extracted from the Collins dictionary and not from the Macmillan dictionary as is indicated. And in the contested decision, the synonyms ‘swift, fast’ are extracted from the online dictionary ‘dictionary.com’ and more specifically from www.thesaurus.com which is accessible by clicking on ‘See more synonyms on Thesaurus.com’.

24. Nevertheless, the Board recalls that a meaning of a word is a well known fact i.e. that it is likely to be known by anyone or may be learnt from generally accessible sources (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 29, 20/04/2005, T‑318/03, Atomic Blitz, EU:T:2005:136, § 35). Dictionary definitions are considered as well known facts (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 59). Well known facts must not be communicated to the parties concerned (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 59; 19/04/2007, C‑273/05 P, Celltech, EU:C:2007:224, § 39). Therefore, the examiner did not violate the applicant’s rights to be heard and a fair hearing as contained in Article 73 EUTMR and the obligation to properly substantiate the decision according to Article 75 EUTMR.

25. It cannot be denied, as the examiner pointed out, that the word ‘express’ is commonly used as meaning ‘fast, swift’, whether for services or for goods. Below are synonyms for “express”?’:

• ‘A system for delivering things (such as letters and packages) quickly’ or ‘A train or bus that travels quickly with few stops’ (definitions extracted from the online dictionary http://www.merriam-webster.com/dictionary/express).

• ‘Fast, direct, quick, rapid, priority, prompt, swift, high-speed, speedy, quickie (informal), nonstop, expeditious’ (synonyms extracted from the online dictionary http://www.collinsdictionary.com/dictionary/english/express).

• ‘Operating at high speed, in particular’ (definition extracted from the online dictionary http://www.oxforddictionaries.com/definition/english/express).

• ‘rapid, swift, fast, quick, speedy, high-speed, brisk, flying, prompt, expeditious; non-stop, direct, uninterrupted, undeviating, unswerving’ (synonyms extracted from the online dictionary http://www.oxforddictionaries.com/definition/english-thesaurus/express#express).

26. The Board does not deny that there are other meanings for the word ‘EXPRESS’, such as the definitions given by the applicant. However, the word also means ‘something which acts at a high speed’ in English, French, German, Slovakian, Spanish and Swedish.

27. The fact that the relevant public is composed of professionals and average consumers with a high level of attention does not alter this.

28. A propeller is a mechanical device for propelling a boat or aircraft, consisting of a revolving shaft with two or more broad, angled blades attached to it. The characteristics of the propellers and especially their thrust are interrelated to the swiftness of the marine vehicles.

29. Therefore, regarding the goods in question, namely ‘propellers for marine vehicles’, it appears that the term ‘EXPRESS’ immediately informs one that the characteristics of the propellers are such that the relevant public would perceive that they will make marine vehicles run at a higher speed than usual.

30. 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). That is the case here, considering that the mark applied for ‘EXPRESS’ in relation to the goods conveys obvious and direct information regarding the nature and the quality of these goods.

31. In light of the above, the examiner has rightly considered that the trade mark applied for is descriptive of the goods claimed within the meaning of Article 7(1)(c) and 7(2) EUTMR for the relevant public.

Article 7(1)(b) EUTMR

32. Pursuant to Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character shall not be registered. It precludes the registration of trade marks which are incapable of fulfilling their essential function (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 23).

33. The trade marks referred to in Article 7(1)(b) are incapable of performing 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 (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 28; 09.07.2008, T-304/06, Mozart, EU:T:2008:268, § 87, and of 20/01/2009, T-424/07, Optimum, EU:T:2009:9, § 20).

34. As confirmed by the Court, a mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86 and 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47).

35. A mark which, as in the case at hand, would simply be seen as descriptive, cannot guarantee the identity of the origin of the marked product to the consumer by enabling him/her, without any possibility of confusion, to distinguish the said product from other products which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, 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 (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

36. In any event, the Board endorses the examiner’s reasoning considering that the mark ‘EXPRESS’ will merely be perceived as a promotional laudatory indication, the purpose of which is to highlight the positive aspect of the goods concerned, namely that they are designed to make marine vehicles go faster than usual. Contrary to the applicant’s claims, this unambiguous message, even with a stand-alone word, is evident, without any particular mental effort from the relevant public.

37. The sign cannot be immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and consequently, the relevant public is not able 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).

38. The contested decision has rightly judged that the sign is descriptive and devoid of distinctive character, in accordance with Article 7(1)(b), 7(1)(c) and 7(2) EUTMR. Therefore, the Board concludes that the contested decision must be upheld.

39. The applicant alleges that it has filed an identical trademark, which was registered by the United States Patent and Trademark Office on 16 January 2001 and considers that this prior registration demonstrates that the English-speaking consumer will be able to perceive the sign as an indication of commercial origin.

40. However, the Board recalls that the European Union trade mark regime is an autonomous system with its own set of rules and which pursues objectives peculiar to it, and its application is independent of any national system. Accordingly, the registrability of a sign as a European Union trade mark must be assessed only on the basis of the relevant European Union legislation. Therefore, the Office and, where appropriate, the European Union judicature are not bound by a decision given in a third country, by which the same sign is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (27.02.2002, with T-106/00 Streamserve, EU:T:2002:43, § 47).

41. Additionally, as regards the applicant’s argument that a number of similar registrations have been accepted by the Office, it is sufficient to point out that, according to 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 that regulation, as interpreted by the European Union judicature, and not on the basis of a previous practice of the Office (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).

42. Moreover, although the Board notes in this instance that there may have been some inconsistency in the examination practice regarding the registrability of signs containing this word, the Board cannot be bound by marks that have been allowed on to the Register by the first instance of the Office. This is particularly so, where the trade mark application in question was never challenged before the Boards of Appeal. In any event, it is well established that the legality of the decisions of the Boards of Appeal must be assessed purely by reference to the Regulation, as interpreted by the European Union judicature, and not on the basis of the Office’s practice in earlier cases (see 27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

Request for oral hearing

43. Article 77(1) EUTMR provides that if the Office considers that oral proceedings would be expedient they shall be held either at the instance of EUIPO or at the request of any party to the proceedings. Thus, the Board enjoys discretion as to whether oral proceedings before it are really necessary (03/02/2011, T-299/09 & T-300/09, Gelb-Grau, EU:T:2011:28, § 34; 20/02/2013, T-378/11, Medinet, EU:T:2013:83, § 71-72).

44. In the present case the Board considers that it is in possession of all the elements necessary to come to a decision. Since the applicant had ample opportunity to present all its legal and factual arguments in writing and did not explain which specific facts or arguments it wished to have discussed in a hearing, the Board does not consider the holding of oral proceedings to be expedient.

45. In the light of the above, the appeal must be dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed G. Humphreys

Signed V. Melgar

Signed A. Pohlmann

Registrar: Signed H.Dijkema