Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 29/02/2016

LANG & TOMERIUS

Rosa-Bavarese-Str. 5

80639 München

GERMANY

Application No:	014649421
Your reference:	T.M593EM
Trade mark:	Auto-Door
Mark type:	Word mark
Applicant:	Thermo Electron LED GmbH Robert-Bosch-Str. 1 63505 Langenselbold GERMANY

The Office raised an objection on 20/10/2015, 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 16/12/2015, which may be summarised as follows:

1. The sign applied for is an arbitrary creation and is neither lexically defined nor used in common parlance. Even if the consumer is familiar with the individual meanings of the terms ‘AUTO’ and ‘DOOR’ and derives the meaning ‘self-propelled door’ from the term ‘Auto-Door’, this meaning does not make any sense with respect to the goods in question, that is laboratory centrifuges.

2. The consumer may be familiar with doors in buildings that open or close automatically in response to a person coming in proximity to them. However, the term will not be perceived as descriptive of the goods. Furthermore, the relevant public will be readily aware of the fact that centrifuges do not have automatic or self-actuating doors for the simple reason that this would violate fundamental safety regulations. Laboratory centrifuges are configured for centrifugation of samples in compliance with maximum security standards.

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.

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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 (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).

Regarding observation 1

The Office disagrees with the first argument raised by the applicant for the reasons specified in the text that follows.

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 its notice of 20/10/2015, the Office provided a dictionary definition of the terms ‘Auto’ and ‘Door’. The extract defines ‘Auto-Door’ as ‘a hinged or sliding self-propelling automatic panel for closing the entrance to a room, cupboard, etc.’. The Office is of the opinion that the relevant, English-speaking, consumers will understand this term as a meaningful expression that conveys obvious and direct information regarding the characteristics of the goods in question, namely the kinds of goods. The word combination ‘Auto-Door’ immediately informs consumers without further reflection that the goods for which registration is sought are self-propelling automatic doors or that they are laboratory centrifuges that have these doors.

Furthermore, according to settled case law, 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 (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32).

Given all the above, the Office maintains its opinion that the sign applied for would be considered descriptive and does not have the minimum degree of distinctiveness.

Regarding observation 2

With regard to the second argument made by the applicant, the Office notes that both automatic doors of buildings and automatic doors of centrifuges need something else for them to function, such as photocells (in the case of the doors of a building) or pressure on the bottom (in the case of laboratory centrifuges), and the relevant public would be aware of this fact. Safety regulations do not need to be affected by this characteristic of the goods in question. Therefore, the argument of the applicant needs to be set aside.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 649 421 is hereby rejected for all the goods for which registration is sought.

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.

Simona MACKOVÁ