Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/01/2016

LEWIS SILKIN LLP

5 Chancery Lane

Clifford's Inn

London EC4A 1BL

REINO UNIDO

Application No:	014276406
Your reference:	DCF/110462.3
Trade mark:	TESSERACT
Mark type:	Word mark
Applicant:	Fourth Dimensional Aerospace Technology Limited Mill Mall, Suite 6 Wickhams Cay 1, P.O. Box 3085 Road Town, Tortola ISLAS VÍRGENES DE GRAN BRETAÑA

The Office raised an objection on 10/07/2015, pursuant to Article 7(1)(b) and (c) and 7(2) CTMR because it found that the trade mark applied for is in part, descriptive and devoid of any distinctive character. The objection letter is attached.

For ease of reference, the contested services were as follows:

Class 42 Scientific and technological services and research and design services; industrial analysis and research services; scientific and industrial research and design relating to aircraft, aerodynamics and fluid dynamics; aerodynamic and fluid dynamic design and engineering; engineering; surveying; technical project studies relating to aircraft, aerodynamics and fluid dynamics; aircraft design; tool design; material testing; computer engineering services; computer engineering relating to aircraft, aerodynamics and fluid dynamics; computer programming and creation of computer programs relating to aircraft, aerodynamics and fluid dynamics; consultancy and advisory services in relation to all the aforesaid services.

The applicant submitted its observations on 23/10/2015 which may be summarised as follows:

• The relevant average consumer upon hearing TESSERACT would not ‘make a sufficiently direct and meaningful association between the expression TESSERACT and the contested services.

• The terms SCIENTIFIC AND TECHNOLOGICAL SERVICES AND RESEARCH AND DESIGN SERVICES; INDUSTRIAL ANALYSIS AND RESEARCH SERVICES are general descriptions. The question is whether there is a descriptive link in what the relevant consumer perceives from the mark TESSERACT when applied to these general descriptions. Would they perceive that such services were supplied in respect of technology relating to a 4D hypercube.

• Such objections to application containing similar wide services would mean that shape related nouns would not be registrable as it would be potentially descriptive of ‘SCIENTIFIC AND TECHNOLOGICAL SERVICES AND RESEARCH AND DESIGN SERVICES; INDUSTRIAL ANALYSIS AND RESEARCH SERVICES’ in respect of such noun.

• This is clearly not the intention of the application of the legislation and attached are examples from the OHIM register of same/similar services registered in respect of THE CONE, CUBES, CUBED.

• TESSERACT is not a commonly understood term, even where it is understood it is taken to relate a ‘4D hypercube’, which is a concept which exists in a theoretical reality.

• The majority of relevant consumers would see TESSERACT not as a directly descriptive term but one that it is a more a laudatory allusion to a proprietor that has an ‘extra dimension’ and so better in the provision of its services than its competitors.

• If the specification had encompassed mathematical services then, as this is a mathematical concept there might be the required nexus between the sign applied for and the services supplied under the sign, however for the reasons stated, this is not the case in relation to the services applied for.

• We do not consider the mark descriptive and so is capable of distinguishing the services of the proprietor.

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 but only in relation to the following terms:

Scientific and technological services and research and design services; consultancy and advisory services in relation to all the aforesaid services.

However, with regards to the remaining contested terms, namely industrial analysis and research services; scientific and industrial research and design relating to aircraft, aerodynamics and fluid dynamics; aerodynamic and fluid dynamic design and engineering; engineering; surveying; technical project studies relating to aircraft, aerodynamics and fluid dynamics; aircraft design; tool design; material testing; computer engineering services; computer engineering relating to aircraft, aerodynamics and fluid dynamics; computer programming and creation of computer programs relating to aircraft, aerodynamics and fluid dynamics; consultancy and advisory services in relation to all the aforesaid services, the Office agrees in principle with the applicant’s submissions and as such waives the objection in relation to these terms.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see Judgment of 16 September 2004, Case C-329/02P SAT.1 SatellitenFernsehen GmbH / OHIM, (SAT.2), ECR I-8317, 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 October 2003, Case C-191/01P, OHIM /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

With regards to the terms Scientific and technological services and research and design services; consultancy and advisory services in relation to all the aforesaid services, the Office is of the opinion that contrary to what the applicant says the term TESSERACT is indeed descriptive of the kind and characteristics of the services in question.

The expression applied for consists of a readily identifiable word from the English language, namely TESSERACT which refers to a four-dimensional hypercube. As such, there is no doubt that the relevant specialist consumer will not perceive it as unusual but rather as a meaningful expression in relation to the objectionable services on the basis that the message expressed by the sign is clear, direct and immediate to the relevant public and in relation to the contested services. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the services claimed.

It is, therefore, the Office’s view that TESSERACT is readily intelligible when taken in conjunction with Scientific and technological services and research and design services; consultancy and advisory services in relation to all the aforesaid services and merely informs consumers that the contested services are directly concerned with tesseracts being four-dimentional hypercubes. Therefore, this expression contains obvious and direct information on the kind and the characteristics of the services.

The Office notes that the applicant does not agree with this viewpoint on the basis that the relevant average consumer upon hearing the term TESSERACT would not make a sufficiently direct and meaningful association between the descriptive meaning of the term TESSERACT and the contested services. However, the Office maintains that it is reasonable to accept that in relation the wide contested services the relevant consumer is likely to directly perceive the expression TESSERACT as a feature of the services themselves rather than primarily bringing to mind a badge of sole trade origin.

Moreover, With regard to the argument that the term TESSERACT is not a commonly understood term this observation cannot in the present case form a valid basis for waiving the objection. 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 services such as those in relation to which the application is filed, or of characteristics of those 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 services concerned (See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32.).

The Office submits that the relevant consumers would perceive the trade mark sought as a descriptive message in relation to the services concerned and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 48).

As regards the applicant’s argument that the Office has registered similar themed marks for the same/similar services, it must be pointed out that, the examination of any trade mark application must be stringent and full and each sign has to be examined on its own facts. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration as trade marks of signs composed of verbal elements, the present application was caught by grounds for refusal set out in Article 7(1) CTMR because of the services in respect of which registration was sought and because of the way in which the sign, as a whole, would be perceived by relevant consumers (See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.).

Additionally, according to settled case‑law, decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous practice of the Office (see judgment of 15/09/2005, C‑37/03 P, 'BioID', paragraph 47 and judgment of 09/10/2002, T-36/01, 'Glaverbel', paragraph 35).

It is clear from the case-law of the General Court 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 (see judgment of 27/02/2002, T-106/00, 'STREAMSERVE', paragraph 67).

Furthermore, the cases mentioned by the applicant cannot be compared on a par with this case, on the basis that none of them bear the term ‘TESSERACT’.

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, the application for the Community Trade Mark TESSERACT is hereby rejected for all the contested services, namely:

Scientific and technological services and research and design services; consultancy and advisory services in relation to all the aforesaid services.

The application will proceed in respect of the acceptable goods and services, namely:

Class 7 Blades for turbines; wind turbines, fluid turbines and electricity generators; mechanical parts for aircraft; aircraft engines; machines and machine tools, namely for the manufacture and repair of vehicles and apparatus for locomotion by land, air and water and parts thereof; motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles; turbines other than for land vehicles; auxiliary power units other than for land vehicles; parts and connecting elements fittings for the aforesaid goods; tools (parts of machines); machine tools; aeronautical machines; apparatus for energy generation.

Class 11 Apparatus for lighting, heating, steam generating, refrigerating, drying, ventilating and water supply; air-conditioning apparatus and machines; ventilating apparatus and machines; air-cooling apparatus and machines; fan blades; air extractors; extractor hoods; electric fans; fans [parts of air-conditioning installations]; fans [air-conditioning]; fans; axial fans; centrifugal fans; hot fans; pedestal mounted fan units; fan covers; filters for air conditioning; flues; flue guards; ventilators; ventilation hoods; ventilation [air-conditioning] installations and apparatus; blowers; parts and fittings for all the aforesaid goods.

Class 12 Vehicles; apparatus for locomotion by land, air, water and rail; aircraft; helicopters; air vehicles; spacecraft; launch vehicles; air balloons; aerostructures; aeronautical apparatus, machines and appliances; aircraft wings; winglets; aerodynamic fins; hydrodynamic fins; rotor blades for helicopters; propellers; keels; vanes; spoilers; fairings; hydrofoils; aerofoils; parts and fittings for all aforesaid goods.

Class 42 Scientific and industrial research and design relating to aircraft, aerodynamics and fluid dynamics; aerodynamic and fluid dynamic design and engineering; engineering; surveying; technical project studies relating to aircraft, aerodynamics and fluid dynamics; aircraft design; tool design; material testing; computer engineering services; computer engineering relating to aircraft, aerodynamics and fluid dynamics; computer programming and creation of computer programs relating to aircraft, aerodynamics and fluid dynamics; consultancy and advisory services in relation to all the aforesaid services.

According to Article 59 CTMR, you have a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at 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.

Sam CONGREVE