Refusal of application for a European Union trade mark

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

Alicante, 06/06/2016

F.F. GORMAN & CO.

15 Clanwilliam Square

Dublin 2

IRLANDA

Application No:	014552418
Your reference:	FG/CG/CM1254
Trade mark:	SWIFTCHILL
Mark type:	Figurative mark
Applicant:	Dairymaster Causeway County Kerry IRLANDA

The Office raised an objection on 01/10/2015 pursuant to Article 7(1)(b) and (c) and 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 mark applied for is:

For ease of reference, the contested goods (as amended) are listed below:

Class 7 Dairy and milking apparatus, equipment and instruments; electrical and electronic milking apparatus, equipment and instruments.

Class 9 Electrical and electronic temperature monitoring and controlling systems and instruments.

Class 11 Coolers; milk coolers; chillers; milk chillers; cooling tanks; milk cooling tanks; chiller tanks; milk chiller tanks; bulk milk tanks; cooling apparatus; cooling elements; cooling evaporators; cooling domes; coils for cooling; milk cooling installations; cooling installations and machines; cooling appliances; chilling apparatus; chilling containers; chilling appliances; plate coolers.

The applicant submitted its observations on 21/03/2016 which may be summarised as follows:

• The mark is clearly not descriptive for the goods claimed.

• The mark is one word, namely SWIFTCHILL in a stylised colour form.

• The mark is formed by a lexical inventive combination of two English words, namely SWIFT and CHILL.

• The goods applied for are agricultural machines and equipment, coolers and chillers. The words SWIFT and CHILL would under no circumstances ever be juxtaposed in the form of a mark in the English language.

• The mark is an inventive, unusual and fancy combination of the two words in a stylised colourful form and is therefore distinctive.

• The two words when juxtaposed would not be normal usage of the English language. Nor would the combination of the two words be used to describe the goods for which registration of the mark has been applied for.

• The mark constitute a syntactically unusual juxtaposition of the two words swift and chill which is not a familiar expression in the English language for designating any of the goods to which objection has been taken, or any of their characteristics.

• The expression swift chill would never be required to be used by a trader providing such goods as those claimed either to describe the goods or a characteristic thereof and is therefore clearly not descriptive of the goods.

• When the stylised mark is considered as a whole the mark is effectively meaningless and would certainly not inform the public of any characteristics of the goods.

• The mark is clearly an indication as to the origin of the goods and is capable of distinguishing the goods from those of other undertakings.

• The mark SWIFTCOOL in device form, which includes the same stylisation and colours as the subject mark proceeded to registration at the EUIPO without any objection (EUTM 14 552 384).

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 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 European 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 October 2003, Case C-191/01P, OHIM /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

The Office is of the opinion that, contrary to what the applicant says, the mark is, indeed, descriptive of the kind and characteristics of the goods claimed.

In the present case, the objectionable goods covered by the mark applied for appear to be mainly specialised goods aimed at a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be high.

Moreover, since the mark consists of English language words (SWIFT and CHILL), the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T-348/02, ‘Quick’, paragraph 30).

The applicant submits that the expression ‘Swift Chill’ is an inventive, unusual and fancy combination and as such constitutes a syntactically unusual juxtaposition of the two words which is not a familiar expression in the English language for designating any of the goods to which objection has been taken, or any of their characteristics and therefore the stylised mark as a whole would function as a distinctive badge of origin and would not be perceived as a non-distinctive/descriptive term in relation to the goods in question it has to be put forward that where the Office finds that the trade mark sought is devoid. The Office cannot agree with this viewpoint.

The expression applied for consists of the combination of two readily identifiable and ordinary words from the English language, namely ‘SWIFT’ and ‘CHILL’. There is nothing unusual about the structure of that sign. The words in the mark applied for are presented in a sequence that is intellectually meaningful and the combination follows ordinary English grammar. Therefore, there is no doubt that the relevant consumer, being the English-language speaking consumer, will not perceive it as unusual but rather as a meaningful expression. Furthermore, the term ‘SwiftChill’ is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer. As a result, the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the contested goods.

It therefore remains the Office’s view that the expression ‘SwiftChill’ is readily intelligible when taken in conjunction with the contested goods on the basis that it immediately informs consumers without further reflection that the objectionable goods are, or directly relate to goods that are capable of cooling/freezing something (food, drink, etc.,) very quickly. Therefore, the Office maintains that the expression ‘SwiftChill’ provides a straightforward and clear message in relation to the kind and characteristics of the goods at issue.

Furthermore, whether the mark is analysed as ‘SwiftChill’ or ‘Swift Chill’, makes little difference with regards to the basis of the objection raised, as whether analysed separately or as a whole, the expression can only be interpreted and understood one way, namely in a descriptive sense in relation to the goods claimed. Therefore, the Office has analysed ‘swift’ and ‘chill’ separately and has objected on the basis that the mark consists of a word produced by a combination of elements resulting in the expression being descriptive as a whole within the meaning of Article 7(1)(c) EUTMR.

Moreover, A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods in respect of which registration is sought is itself descriptive of the characteristics of those goods 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, 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 (See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.) In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgment of 30/11/2004, T‑173/03, ‘NURSERYROOM’, paragraph 21).

The applicant’s argument that the expression ‘Swift Chill’ would under no circumstances be used in the relevant industry for the goods at issue has no significance. The applicant is reminded 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 such as those in relation to which the application is filed, or of characteristics of those goods. 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 concerned (See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 32.).

Furthermore, it has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, 'Develey', paragraph 19).

It is on that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as a descriptive message 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).

Additionally, as regards the argument that third parties, and more particularly competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free (See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 39).

The Office notes the applicant’s submissions regarding the fact that that the sign does not merely contain word elements but also includes fanciful figurative elements and specific colour determinations which renders the mark as a whole as distinctive. In addition the applicant submits that the words ‘Swift Chill’, combined are a lexical inventive combination of two English words which is an inventive, unusual and fancy combination of the two words in a stylised colourful form and is therefore distinctive. However, the Office cannot agree with this viewpoint.

It remains the Office’s viewpoint that the relevant consumer will understand the expression ‘SwiftChill’ as meaningful for the reasons already given. Therefore the Office maintains that the words ‘SwiftChill’ fail to create an overall distinctive impression but rather will be perceived as obvious and direct information regarding the kind and characteristics of the goods in question and not as a badge of sole trade origin.

Moving now to the stylisation of the mark. The applicant submits that the words of the mark are written in a fancy form whereby the inner core of the letters are in dark blue surrounded by a yellow border. Thus the applicant submits that the combination of these colours is in itself distinctive and the manner in which the letters are used in these two colours is particularly distinctive. The Office cannot agree with this viewpoint.

The Office is of the opinion that the figurative elements in the sign are not sufficient to overcome or disguise the descriptive message in the mark on the basis that the figurative elements are not sufficiently striking, nor unusual and therefore not capable of creating an immediate and lasting memory in the minds of the consumer by diverting their attention from the descriptive/non-distinctive message conveyed by the words contained in the mark. Nor can it be said that the figurative elements are of such a nature as to require an effort of interpretation from the relevant consumer in order to understand the meaning of the word elements. Therefore the Office is of the viewpoint that the descriptive content of the sign, as previously discussed, overrides the figurative elements in the sign.

Consequently, although the mark contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C-37/03 P, ‘BioID’, paragraph 74). Accordingly, the Office remains of the viewpoint that the clear message conveyed by the mark is unaffected by the stylisation present in the mark which for the reasons already given will be so minimal in the consumer’s perception that it will not influence the general impression conveyed by the mark as a whole on the basis that the stylisation is not sufficiently distinctive to disguise the clear descriptive message conveyed by the mark.

The Office notes from the applicant’s submissions that the goods concerned would tend to be purchased by a professional public who when buying those goods concerned would spend a great deal of time and forethought considering the merits of one producer’s products compared to another before one is finally chosen, etc, as such the goods concerned are likely to be a considered purchase which the relevant public would undertake the relevant purchase with a higher than average level of care and attention resulting in a heightened level of awareness, consequently the relevant consumer would see the expression ‘SwiftChill’ as a badge of sole trade origin and not as a descriptive/non-distinctive term in relation to the goods concerned.

However, there is no evidence to suggest that the relevant consumer in the area of the goods claimed would be particularly trade mark ‘educated’ or savvy and would instantly perceive the expression ‘SwiftChill’ as having any trade mark significance in relation to the contested goods claimed rather than a descriptive message in relation to the kind and characteristics of the goods.

Furthermore, on a similar note, it must be held that the fact that the relevant public may be a professional/specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

As regards the applicant’s argument that a similar mark has previously been registered by the Office (EUTM 14552384 – SWIFTCOOL), 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.

Additionally, according to settled case‑law, decisions concerning registration of a sign as a European 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 trade mark must be assessed solely on the basis of that regulation, as interpreted by the European 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).

Due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the European Trade Mark is hereby rejected for all the goods which have been claimed.

Sam CONGREVE