Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 28/04/2016

ROCHE, VON WESTERNHAGEN & EHRESMANN

Postfach 20 16 53

D-42216 Wuppertal

ALEMANIA

Application No:	013974308
Your reference:	MK26847-03EM
Trade mark:	CrossCoat
Mark type:	Word mark
Applicant:	ITW Dynatec GmbH Industriestrasse 28 D-40822 Mettmann ALEMANIA

The Office raised an objection on 05/05/2015 and subsequently on 11/11/2015 pursuant to Article 7(1)(b) and (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 letter.

The applicant submitted its observations on 11/03/2016, which may be summarised as follows:

1. The list of goods has been amended

2. The mark is not descriptive and is distinctive

3. The evidence provided by the Office is not official

4. The goods relate to adhesives not to painting

5. The list of goods can be further amended

6. Similar marks have been registered by the Office in the past

7. Declaration by Mr Pahl

Pursuant to Article 75 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.

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

The list of goods has been amended

The applicant has submitted a limitation for the goods applied for. The Office has limited the goods as requested and will proceed the examination on the basis of this amended list:

Class 7 Equipment for applying liquid adhesives; apparatus for dispensing multi-component materials; spray guns, nozzles, applicators and apparatus for applying adhesive onto substrates; apparatus for moving adhesive application apparatus; hoppers, spray booth and equipment for liquid adhesive collection; apparatus for continuously coating substrates with adhseive; apparatus for supplying adhesive material; cold and hot melt glue machines and equipments; gluing machines and equipments, thermal contact gluing machines, installations for dispensing adhesives, installations for melting adhesives; adhesive feeder machines; adhesive drum unloaders; supply hoses; adhesive applicators; glue guns (electric), adhesive glue gun applicators.

Class 9 Electrical components and electric apparatus for machines for melting, mixing, metering and/or applying liquid adhesives.

Taking into account the amended list goods the Office still believes that the mark is descriptive and non-distinctive. In essence the limitation done has retained adhesives, whilst deleting other material such as sealants and caulks. Thus the apparatus and equipment in class 7 no longer covers these materials but solely adhesives. The same reasoning also applies for class 9.

The fact that the material being applied by equipment is adhesives, does not change the findings of the Office. This method of applying adhesives can also be done by the crosscoat method, covering layers by moving and intersecting. Therefore the limitation provided does not overcome the objection previously raised by the Office.

The mark is not descriptive and is distinctive

Under Article 7(1)(c) EUTMR, ‘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) EUTMR 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 European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

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) [EUTMR] 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).

The Office holds that the mark in question lacks distinctiveness and is descriptive. It simply state the method how the equipment works to apply adhesives in the case of class 7.

There is nothing contained in the word mark which can be considered distinctive. The word mark simply informs users that the machines and equipment apply the cross coat method to treat and produce the goods in production. Consumers, even the professional consumers will not view the mark as a trade mark but rather as a description of how the equipment works.

Trade marks should act as business identifiers. In the case at hand this is not possible because there is nothing distinctive in the mark.

The evidence provided by the Office is not official

The applicant holds that the reference to website done by the Office refers to a private website (www.anestiwata.com). Furthermore it holds that the website is not official.

The website provided is a website belonging to a private company, which however can be accessed by anyone connected to the Internet. The Office provided this website reference to demonstrate that this word is being used in a descriptive way by third parties which are not related to the applicant.

The applicant further comments that the word is not found in the dictionary. This is partly true, the word per se is not found in dictionaries.

In this regard the Office notes that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not 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 provision 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, ‘Wrigley’, paragraph 32.)

Furthermore the Office notes that in the letter sent on 11/11/2015 the Office has explained used a reputable dictionary how this word will be perceived. Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59). Considering the mark as a whole, the mark is considered to be descriptive and non-distinctive.

The goods relate to adhesives not to painting

The fact that the goods relate to adhesives not to painting is irrelevant. Adhesives can be applied to material in the same way as paint. Therefore the material which will be applied by the machines is irrelevant. The mark is being objected to because the mark is descriptive and non-distinctive of the technique being used by the equipment, rather than the material which will be used by the machinery.

The list of goods can be further amended

The applicant has suggested two possibilities of how the list of goods can be amended to overcome the objection, however the Office believes that these limitations will not help the applicant overcome the objection. While these amendments can overcome the objection raised by the Office under Article 7(1)(b) and (c) EUTMR, however given the nature of the limitations proposed another ground would be raised. If the list will be amended as proposed by the applicant, the Office believes that the mark will then be objectionable on the grounds of deceptiveness. In other words the mark will then be objectionable under Article 7(1)(g).

Similar marks have been registered by the Office in the past.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

In this regard the Office notes that the marks cited by the applicant bear no resemblance to the mark in question. The fact that there are other marks combining the word ‘cross’ with other words is irrelevant. The word ‘cross’ in itself is not objectionable. The mark is objectionable in this case because the combination of the words ‘cross’ and ‘coat’ taking into account the goods applied for, renders the mark descriptive and non-distinctive.

Declaration by Mr Pahl

The applicant submitted an affidavit from Mr Pahl, an engineer who employed by the applicant. Mr Pahl submits that the word ‘Crosscoat’ has been used as a trade mark since 2012, and that such a word is not commonly used in the market.

As regards Mr Pahl’s argument that no other competitors make use of the same combination, the Office notes that ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

Furthermore 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).

Thus the fact that the mark has been used as a trade mark does not impede the Office from refusing the mark on the basis of descriptiveness and non-distinctiveness. The fact that the mark has been used does not render a mark distinctive or non-descriptive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 13 974 308 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Alistair BUGEJA