Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/10/2015

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	014223804
Your reference:	TM402330EM-JAF/JXM
Trade mark:	FLOWRAP
Mark type:	Word mark
Applicant:	SHANKLIN CORPORATION 200 Riverfront Boulevard Elmwood Park New Jersey 07407 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 28/07/2015 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.

The applicant submitted its observations on 28/09/2015, which may be summarised as follows:

1. The applicant states that the Internet extracts and definitions taken from the Internet by the Office are not valid because they come from the United States of America, New Zealand or, in the case of one article, the extract dates from a few years back. None of these extracts serve to demonstrate the descriptiveness of ‘FLOWRAP’.

2. The applicant disputes that the expression ‘FLOWRAP’ will be read as two words, ‘FLOW’ and ‘WRAP’. It claims that the expression is a single, invented and meaningless term which has the look and feel of a trade mark and has the ability to function as an indicator of origin. It would require some mental effort and analysis on the part of the average English-speaking consumer to make a link between the invented word ‘FLOWRAP’ and the individual words ‘FLOW’ and ‘WRAP’.

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.

Decision

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).

1. Regarding the applicant's argument concerning the irrelevance of the Internet references quoted in the decision, the Office would like to stress that the decision does not rely solely on these references in the grounds for refusal given. It would, moreover, be unrealistic to assume that the fact that a few Internet hits are attached to the decision implies that no more references can be found on the Internet. A sample of hits is merely given for practical purposes. It is also not true to say that listing Internet hits which correspond to New Zealand or American websites is irrelevant. Consumers from other parts of the world will clearly be able to access the websites in question if they so choose.

Furthermore, the Office reminds the applicant that it also provided a dictionary definition for ‘FLOWRAP’ in the provisional refusal. To recall:

‘The trade mark ‘FLOWRAP’ will be read naturally by the English-speaking public as two words, ‘FLOW’ and ‘WRAP’, with the following meanings:

FLOW ‘to show or be marked by smooth or easy movement’ (information extracted from www.collinsdictionary.com on 28/07/2015).

WRAP ‘to fold paper, etc, around to fasten securely’ (information extracted from www.collinsdictionary.com on 28/07/2015)’.

It is important to remember that in order to raise an objection under Article 7(1)(c) CTMR, it is not necessary for the expression in question to be in current use. For a trade mark to be refused registration under Article 7(1)(c) CTMR,

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.)

2. The applicant goes to some lengths to claim that the relevant consumer will not read the expression ‘FLOWRAP’ as two separate words. Rather it claims that the omission of a ‘W’ in the middle of the expression is so striking that consumers will see it as an entirely invented and original word. The Office does not agree with the applicant’s claims in this regard. First, it is always necessary to view a trade mark in conjunction with the specific goods and services applied for. In this case, the applicant has applied for ‘packaging machines’ in Class 7. Packaging involves the act of wrapping. Consequently, a link with the expression ‘FLOWRAP’ readily springs to mind. Second, the Office has defined the relevant consumer as professional and therefore a consumer who will display a degree of attention likely to be higher than usual. Professionals in the packaging industry will be all too aware of the techniques in employed in their field of activity. They will of course be familiar with the process of ‘flow wrapping’. Finally, the Office contends that ‘FLOWRAP’ instead of ‘FLOWWRAP’ cannot be considered an unusual misspelling. ‘W’ is the last letter of ‘FLOW’ and the first of ‘WRAP’. It is an omission that will be overlooked because it occurs in the middle of the expression and the human eye will be most likely to read the expression as ‘FLOW WRAP’ and quite possibly not even notice that a ‘W’ is missing.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 223 804 is hereby rejected for all the goods 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.

Lucinda CARNEY