Refusal of application for a European Union trade mark

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

Alicante, 06/04/2016

3VOLUTION LIMITED

10 South Parade

Leeds, West Yorkshire LS1 5QS

REINO UNIDO

Application No:	014321707
Your reference:	HYD001-0001_Viscomelt
Trade mark:	Viscomelt
Mark type:	Word mark
Applicant:	Hydramotion Limited Seven Street, York Road Business Park, Malton North Yorkshire YO17 6YA REINO UNIDO

The Office raised an objection on 15/07/2015 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 14/11/2015, which may be summarised as follows:

1. Τhe applicant designs, manufactures and sells a range of the viscometers in the UK and internationally. A viscometer is a highly technical piece of equipment to measure viscosity in both Newtonian and non-Newtonian fluids not just polymer melts. The types of properties measured by the applicant’s goods include viscosity but also they measure elasticity and fluid yield stress. There are many types of viscometers. Even if it is accepted that ‘Viscomelt’ could be read as “melt viscosity”, the relevant consumer would associate it only to goods measuring this property and not other rheological properties.

2. A typical consumer is a highly specialised scientists, technicians or engineers who possess a technical understanding.

3. The word ‘Viscomelt’ cannot be found in English dictionaries. The combination of the two individual verbal elements is far removed from the meaning of either of its components.

4. The prefix “visco” does not automatically cause the relevant consumer to consider it relates to the word “viscosity”. It can have a number of meanings such as “viscose”.

5. The applicant claims and submits evidence to prove that its mark ‘Viscomelt’ is already known by customers. It has submitted eight press releases in total.

6. Finally, the applicant claims that should the Office maintain the objection the applicant wishes to be informed and to be given a two month extension to submit a formal opposition.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection, informed the applicant and granted a two month extension in order for him to submit additional evidence. The applicant did not submit any other evidence.

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.

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).

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).

In terms of the applicant´s argument that a viscometer is a highly technical piece of equipment which measures viscosity but also elasticity and fluid yield stress the Office reminds 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.)

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

This clearly applies to the present case. The sign ‘Viscomelt’ is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. As mentioned in the letter from the Office of 15/07/2015, the sign at issue conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question. The term ‘Viscomelt’ consists exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark, but as a descriptive indication of the characteristics of the goods and services in question, namely that they are apparatus and scientific services with regards to different rheological properties, viscosity measurements and controls, especially those dealing with melt viscosity. Indeed, the perception of the mark sought in a descriptive meaning is not prevented by the juxtaposition of the term that makes up the said mark, since this technique is relatively common and current in advertising and marketing.

The applicant argued that the term Viscomelt’ is not to be found in dictionaries; however, English dictionaries do not generally provide definitions of combined terms, but rather of single words and common expressions and proverbs. One cannot expect to find every possible combination of words resulting in a grammatically correct expression in the dictionary. It is, therefore, not necessary for the office to prove that the word or expression is the subject of a dictionary entry in order to refuse a sign. This is particularly the case for composite terms, as dictionaries do not include entries of all possible combinations of words. What matters is the ordinary and plain meaning of the expression, properly explained in the Office’s objection letter.

(See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.)

Moreover, the Office is not obliged to show that the meaning of the word is immediately apparent to the relevant consumers to which the goods are addressed. It suffices that the word is meant to be used, or could be understood by part of the relevant public, as a description of the claimed goods or services, or a characteristic of the goods and services (judgment of 17/09/2008, T 226/07, ‘PRANAHAUS’, paragraph 36).

The message conveyed by the mark sought is clear, direct and immediate in the relevant public’s eyes. It is not vague in some way or other, it does not lend itself to different interpretations in the context of the goods and services concerned, it is not suggestive and, grammatically, the juxtaposition of the elements in a single word does not change in any way either the pronunciation or the conceptual content.

The Office concludes that the mark at issue comprises two elements that are identifiable and comprehensible at first glance (13/11/2008, T-346/07, Easycover, EU:T:2008:496, § 52). Hence, from an assessment of the mark sought as a whole, the Board of Appeal finds that because of the use of the juxtapositions of the terms ‘visco’ and ‘melt’ form combinations clearly capable of being disassociated and it considers that these juxtapositions are neither unusual nor striking nor contrary to the rules of grammar.

The Office agrees with the applicant that, in a principle, the goods and services designated by the mark are indeed directed mainly at professionals and particularly scientist and laboratory technicians. Their level of attention will therefore most likely be high.

However, this does not mean that the members belonging to these circles of consumers, although more attentive, will be not able to perceive any descriptive connotation in the sign under examination. In that regard, it must be pointed out that a higher level of attention and awareness by the professional public at issue does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, components which might be perceived as rather fanciful and distinctive by the public at large, may be perceived immediately as common and non-distinctive by a more aware and attentive public (see, by analogy, 11/10/2011, T 87/10, Pipeline, EU:T:2011:582, § 27 to 28).

The Office cannot follow the applicant´s argument that the prefix “visco” does not automatically cause the relevant consumer to consider it relates to the word “viscosity” but it could have other meanings such as “viscose”. The Office finds that the specialised public when faced with the specialised goods and services of the applicant will immediately make the association with the term “viscosity” and not to the fabric viscose.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(See judgment of 10/11/2004, T‑396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63.)

Given the above, the Board points out that at the very least, evidence of acquired distinctiveness through use must be shown for the United Kingdom, Ireland and Malta, where English is one of the official languages. Consequently, the relevant public for the assessment required by Article 7(3) CTMR includes, at the very least, the consumers of those Member States (see 09/12/2010, T 307/09, Naturally active, EU:T:2010:509, § 26 and the case-law cited therein).

The burden of proof lies with the applicant who has claimed that the sign applied for has acquired distinctiveness.

As proof of acquired distinctiveness, the applicant submitted the following documents:

• A press release issued by the applicant´s company dated 13/09/2012

• A press release issued by the applicant´s company for an internet advertisement

• A press release issued by the applicant´s company dated 14/01/2008 for a publication in the “International Fiber Journal”

• A press release issued by the applicant´s company dated 10/01/2008for a publication in Italian scientific journal.

• Two press releases issued by the applicant´s company dated 01/10/2008 and 25/07/2008 related to a case study of the use of “viscomelt” viscometer.

• Two press releases issued by the applicant´s company on 2009 for the participation in the Achema Exhibition and a publication in “Engineering Specified”

The Office has carefully examined all the evidence presented. It is considered that the evidence provided is not sufficient to prove that the mark applied for has become distinctive in consequence of the use which has been made of it in the relevant territory under the circumstances referred to in Article 7(3) EUTMR. The Office notes that the applicant only submitted press releases issues by the applicant’s company. The claims regarding the recognition of the mark are not backed up by any evidence, such as invoices, sales contracts, audited financial data or third party evidence.

The applicant has not provided sufficient evidence in order to demonstrate a clear picture of the intensity of the use and degree of recognition of the mark among the relevant public in the relevant territories of the European Union. In particular, it has not been established that the relevant public, even if professional, identifies the goods and services applied for as originating from a particular undertaking because of the intensive use on the relevant market of the sign for the purpose of distinguishing the commercial origin of the goods and services at stake.

In that regard, the Office points out that the objective evidence brought by the applicant is so scant that, in the absence of more information or further solid evidence, the documentation produced cannot be considered sufficient for establishing acquired distinctiveness through use.

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 14 321 707 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Aliki SPANDAGOU