Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 19/11/2015

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	013960406
Your reference:	EW33213AFebe
Trade mark:	AIRJET
Mark type:	Word mark
Applicant:	Nabtesco corporation 7-9, Hirakawa-cho 2-chome, Chiyoda-ku Tokyo JAPÓN

The Office raised an objection on 08/05/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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 letter.

On 06/07/2015, the applicant requested an extension of two months to submit his observations in reply.

The applicant submitted its observations on 07/09/2015, which may be summarised as follows:

1. The applicant requested a limitation of the list of goods by deleting “air injection nozzles used for snow removing machines and apparatus for railway points” in class 7.

2. The word combination “AIRJET” does not convey any direct information regarding the kind, quality, quantity, intended purpose, value, geographical origin or time of production or any other characteristics of the applied for goods or services.

3. The goods seeking protection by the Community Trade Mark Application usually function in either a mechanical or chemical way, namely by blowing or scraping or by application of chemical salt. Snow is typically removed with the use of force but atypically with air. Consumers will therefore not see any descriptive reference in the term of “AIR”.

4. Snow removing machines may also function by using jets, but there is no obvious and clear meaning of this term with respect to a specific feature of the goods applied for. Consumers will therefore not see any link between the word “JET” and the goods in class 7 or the services in class 37.

5. The examiner’s explanation of the individual terms of “AIRJET”, i.e. “AIR” and “JET” does not allow any conclusion regarding the consumers’ understanding of the combined fanciful term “AIRJET”.

Pursuant to Article 75 CTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) CTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

As regards the applicant’s first line of argument that the combination “AIRJET” does not convey any direct information regarding the kind, quality, quantity, intended purpose, value, geographical origin or time of production or any other characteristics of the applied for goods or services, the Office respectfully disagrees with the Applicant. The Office submits that it has not been mentioned that the term “AIRJET” conveys direct information regarding the quality, quantity, value, geographical origin or time of production of the goods or services applied for. Therefore, in the Office’s view, this argument can not be taken into account.

As it has already been noted in our previous communication, the combination “AIRJET” taken as a whole, immediately informs consumers without further reflection that the goods objected to, are snow removing machines and apparatus which function/operate with air jets, and that the services applied for are repair and/or maintenance services of the objected goods. Therefore, the Office is convinced that the mark conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question.

As regards the applicant’s next line of argument that the goods seeking protection usually function in either a mechanical or chemical way and that neither of these methods have anything to do with the Examiner’s interpretation of “AIR”, as already mentioned in our previous notification, it must be noted that the mark consists of the combination of two conjoined terms “AIR” and “JET”, which applied to the goods and services concerned, will be understood as a meaningful expression : a rapid stream of air forced out of a small opening.

The Office highlights that, the Applicant does not dispute that there exist on the market lots of snow removing machines/equipment which operate/function by using jets. Therefore, the Office points out that the link between the words “AIRJET” and the goods and services concerned is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2).

As regards the applicant’s last argument that the examiner’s explanation of the individual terms of “AIRJET”, i.e. “AIR” and “JET” does not allow any conclusion regarding the understanding of the combined fanciful term “AIRJET”, it must be held that the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 13960406 is hereby rejected for all the goods and services claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Soledad PALACIO MONTILLA