Refusal of application for a European Union trade mark

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

Alicante, 21/07/2016

VENNER SHIPLEY LLP

200 Aldersgate

London EC1A 4HD

REINO UNIDO

Application No:	14 654 818
Your reference:	DAB/77681CTM1
Trade mark:	SMARTERALLOYS
Mark type:	Word mark
Applicant:	Smarter Alloys Inc. 75 Bathurst Drive Waterloo Ontario N2V 1N2 CANADÁ

The Office raised an objection on 02/11/2015 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 01/03/2016 and 04/04/2016, which may be summarised as follows:

1. The applicant limited the list of goods and services.

2. The applicant argues that the comparative adjective ‘SMARTER’ is not a word generally used with the word ‘ALLOYS’. One material is not ‘smarter’ than another. The relevant consumer will not understand the mark as a whole as a meaningful expression in relation to the remaining services.

3. The applicant also argues that the combination of the words ‘SMARTER’ and ‘ALLOYS’ is an unusual juxtaposition that would give the relevant consumer of the services in question reason for further thought. The combination of the two words amounts to more than the mere sum of its individual verbal elements. The combination of the two words into a single long word of 13 letters adds to the distinctiveness of the mark. The mark as a whole includes the words ‘SMART’, ‘ART’, ‘MA(R)TER(I)AL’, ‘ALL’, ‘ALLOY’ and ‘ALLOYS’.

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.

1. The Office maintains the objection, despite the limitation of the goods and services to the following:

Class 40 Custom manufacture of orthodontic appliances; custom manufacture in the field of medical devices, automotive actuators, aerospace actuators, sporting goods, industrial devices and springs.

Class 42 Metallurgical and engineering research and new product development; engineering research in the fields of medicine, medical instruments, dentistry, orthodontic appliances, automotive actuators, aerospace actuators and sporting goods; dental research laboratory services; medical laboratory services.

The Office maintains that the mark directly describes the characteristics of these remaining services (see the further arguments below).

2. The applicant argues that the comparative adjective ‘SMARTER’ is not a word generally used with the word ‘ALLOYS’. However, as the Office has already explained in its objection, the expression ‘smart alloy’ is used to refer to a shape-memory alloy, namely a smart material that can ‘remember’ its original shape. The expression ‘SMARTER ALLOYS’ shows that the services at issue serve to treat, research or develop smart materials that are better than the average; that the goods that the services in question relate to offer advantages over others, for example they are made of or contain a more sophisticated alloy than that usually used for similar products; that the services in question are rendered using smart alloys that are more advanced than those of competitors; and/or that the goods are, as a result of development, research and engineering services, the next generation of smart alloys. The mark describes a positive characteristic of the goods resulting from the services at issue, showing that they are better than those of competitors.

3. The applicant argues that the juxtaposition of the words in the mark is an unusual combination and that the mark as a whole can be split in several ways. However, although a range of words can be recognised in the mark, it is only the combination of the words ‘SMARTER’ and ‘ALLOYS’ that the relevant public will identify without any doubts.

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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

As regards the argument that several variations and words can be recognised in the mark, the Office finds that this fact does not suffice to make the mark non-descriptive and distinctive.

The Office maintains that the expression directly describes the characteristics, especially the kind, quality and value, of the services in question. The relevant public is more likely to understand the word as a descriptive term in relation to the services in question, rather than as an indication of their commercial origin.

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 14 654 818 is hereby rejected for all the services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.

Judit NÉMETH