Refusal of application for a European Union trade mark

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

Alicante, 15/04/2016

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	014647705
Your reference:	TM402675EM-JAF/JXM
Trade mark:	FEROCIOUSLY STRONG TAPE
Mark type:	Word mark
Applicant:	Shurtape Technologies, LLC 1712 Eighth Street Drive, SE Hickory, North Carolina 28602 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 01/12/2015 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 05/01/2016, which may be summarised as follows:

1. The term ‘FEROCIOUS’ can have meaning provided by the Office in certain circumstances. The Office has not taken into account how the term is used and understood by the English-speaking consumer. The word ‘FEROCIOUS’ is normally used in the context of an animal, to denote ‘savagely fierce, cruel or violent’. It would never be used to describe an inanimate object, such as adhesive tape. Even where the term ‘FEROCIOUS’ might be used to mean ‘very great; extreme’ and to describe something other than an animal, it would be used to denote something which is marked by extreme and violent energy, or is otherwise aggressive, fierce or brutal. These connotations of aggression and violence are so far removed from the goods applied for that the term ‘FEROCIOUSLY’ cannot be considered descriptive in relation to such goods. On the contrary, the term is unusual and surprising when used in the context of an adhesive tape. The term is only used to mean ‘to a very great degree; extremely’ in specific circumstances and those circumstances do not apply to the goods applied for.

The mark as a whole is surprising and unusual. The consumers would not expect that the goods in question could be described as ‘FEROCIOUSLY STRONG’. The term ‘FEROCIOUS’ is completely out of its normal context.

2. The applicant referred to the EUTM No 004965968 (‘FEROCIOUSLY STRONG’) that has been registered for goods in Class 31.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

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.

‘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).

1. Regarding the applicant’s first argument, the Office notes that it took into account how the term would be understood by the relevant public within the mark applied for and in relation to the goods in question. The Office does not dispute that the word ‘FEROCIOUS’ would be understood by the relevant consumers differently when describing animals. However the Office is of the opinion that the word ‘FEROCIOUS’ does not connote merely aggression and violence. The interpretation of the word depends on the context in which it is perceived. When assessing the distinctive character and descriptiveness of a trade mark the mark needs to be considered as a whole. Therefore, the Office maintains its opinion that within the mark the word ‘FEROCIOUSLY’ would be perceived by the relevant consumers in the meaning ‘extremely’.

For the abovementioned reasons the Office does not consider the mark ‘FEROCIOUSLY STRONG TAPE’ as surprising and unusual. The combination of words in question is maybe not commonly used on the market to describe the goods concerned, however, this does not automatically mean that the relevant consumers would not perceive the mark as an obvious and direct description of the goods applied for and that they would perceive it as a badge of commercial origin.

2. As regards the EUTM referred to by the applicant, the ‘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).

The mark was registered for the goods in Class 31 almost ten years ago. Having reviewed the case cited by the applicant, the Office does not believe that this finding is persuasive in this matter.

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 14 647 705 is hereby rejected for all the goods 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.

Klara BOUSKOVA