Refusal of application for a European Union trade mark

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

Alicante, 04/07/2016

GPI & ASSOCIÉS

EuroParc de Pichaury Bât 2-1ºE

1330, Rue Guillibert de la Lauzière

F-13856 Aix-en-Provence Cedex 3

FRANCIA

Application No:	014664502
Your reference:	338/24/A/UE/15
Trade mark:	CUSTOMFIT
Mark type:	Word mark
Applicant:	FKA Distributing Co., LLC d/b/a HMDX 3000 Pontiac Trail Commerce Township Michigan MI 48390 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 29/10/2015, 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 26/02/2016 and on 03/03/2016, which may be summarised as follows:

1. The applicant does not deny that the expression ‘CUSTOMFIT’ is composed of two words, ‘CUSTOM’ and ‘FIT’. Nevertheless, this expression as a whole does not exist in English. The combination of words making up the mark is not directly related to the goods for which registration is sought.

2. The expression ‘CUSTOMFIT’ does not convey direct information regarding the kind and quality of the goods in question. The sign is not a laudatory term denoting a positive and/or superior quality of the goods.

3. The expression ‘CUSTOMFIT’ is vague, may be considered allusive at most and has a minimum degree of distinctiveness.

4. A list of successfully registered EUTMs was submitted, namely EUTM No 14 659 775 ‘CUSTOM TAN’ for goods in Class 3 and EUTM No 15 054 919 ‘CustomChill’ for goods in Class 11.

5. The USPTO has accepted to publish for opposition purposes the mark ‘CUSTOMFIT’. The perception of the US consumer is not very different from that of the English-speaking consumer in the EU.

6. Further observations were submitted on 03/03/2016 in relation to the publication of EUTM application No 15 131 171 ‘CustomFit’ for goods in various classes, including goods in Class 9.

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.

General remarks

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/2’, 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.

(Judgment of 23/10/2003, C‑191/01 P, ‘Doublemint’, 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).

This is clearly the case with the mark at issue.

Moreover, since the sign is made up of several components, 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).

Observations of the applicant

1. The applicant does not deny that the expression ‘CUSTOMFIT’ is composed of two ‘CUSTOM’ and ‘FIT’. Nevertheless, this expression as a whole does not exist in English. The combination of words making up the mark is not directly related to the goods for which registration is sought.

2. The expression ‘CUSTOMFIT’ does not convey direct information regarding the kind and quality of the goods in question. The sign is not a laudatory term denoting a positive and/or superior quality of the goods.

As indicated in the previous letter of the Office, the conjoined words ‘CUSTOM’ and ‘FIT’ in the sign are clearly understandable and, taken as a whole, have a clear meaning, referring to ‘fitting as if made to the specifications of an individual’.

The mere fact that an expression is not found in dictionaries does not render a sign eligible for registration (judgment of 12/01/2000, T‑19/99, ‘COMPANYLINE’, paragraph 26; and judgment of 26/10/2000, T‑345/99, ‘TRUSTEDLINK’, paragraph 37). This applies to the present case because the sign is an ordinary combination of two common English words, which are immediately intelligible. Moreover, it is impossible for every imaginable word combination to be included in a dictionary.

As regards the applicant’s argument that the combination of words making up the mark is not directly linked to the goods for which registration is sought, 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.

Therefore, considering the nature of the mark, the goods in question and the target public – which is English-speaking and either average consumers or professionals – the expression ‘CUSTOMFIT’ immediately informs the relevant public that the goods for which registration is sought are adjusted to a specific shape, size and form, according to customers’ specifications and requirements.

By way of example, if applied to earphone cord management system, the sign indicates that the these goods fit the user and meet their specific requirements, namely they fit as if made to the specifications of individual customers.

Therefore, the Office considers that the sign conveys obvious and direct information regarding the kind and the quality of the goods in question and would not be regarded as a badge of origin.

In reply to the applicant’s statement that ‘the sign is not a laudatory term denoting a positive and/or superior quality of the goods’, the Office stresses that, in a previous letter, there was no reference to this argument.

3. The expression ‘CUSTOMFIT’ is vague, may be considered allusive at most and has a minimum degree of distinctiveness.

The mark provides the direct message that the goods in question, earphone cord management system, fit as if made to the specifications of individual customers. For this reason, the sign is neither vague nor allusive.

4. A list of successfully registered EUTMs was submitted, namely EUTM No 14 659 775 ‘CUSTOM TAN’ for goods in Class 3 and EUTM No 15 054 919 ‘CustomChill’ for goods in Class 11.

The fact that the marks ‘CUSTOM TAN’ and ‘CustomChill’ operate as trade marks for the goods and services registered, as they have been considered endowed with distinctive character, cannot necessarily be extrapolated to the mark in question. In fact, these marks are not similar to the mark in the present case.

Furthermore, according to settled case law, ‘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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

5. The USPTO has accepted to publish for opposition purposes the mark CUSTOMFIT’. The perception of the US consumer is not very different from that of the English-speaking consumer in the EU.

As regards the USPTO decision referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

6. Further observations were submitted on 03/03/2016 in relation to the publication of EUTM application No 15 131 171 ‘CustomFit’ for goods in various classes, including goods in Class 9.

As regards the publication of EUTM application No 15 131 171 ‘Customfit’ on 03/03/2016, the Office has reopened the case in question under Article 7 EUTMR. On 14/03/2016, a letter of provisional refusal for all the goods for which registration was sought was issued. During the two-month period given, the applicant did not file any observations. On 01/06/2016, the Office sent the final appealable decision.

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 14 664 502 is hereby rejected for all the goods claimed.

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.

Antonino TIZZANO