Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 15/03/2016

HAFT KARAKATSANIS

Dietlindenstr. 18

D-80802 München

ALEMANIA

Application No:	014687024
Your reference:	41433_EU
Trade mark:	Super Step
Mark type:	Figurative mark
Applicant:	Willy Wei Yu HO P.O. Box 24-108 Taipei TAIWÁN

The Office raised an objection on 06/11/2015, 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. The objection letter is attached.

For ease of reference, the contested goods are listed below:

Class 28 Treadmills; rowing machines; stair stepping machines; resistance machines; body inversion equipment; inversion tables; skateboards recreational equipment; weight lifting benches; exercise benches.

The applicant submitted its observations on 04/01/2016, which may be summarised as follows:

• The applicant disagrees that the trade mark, taken as a whole, is not clearly descriptive in relation to the goods claimed.

• A verbal element is only non-distinctive if it is so frequently used that it has lost the capacity to distinguish the goods claimed.

• Under the applicable jurisdiction a minor amount of distinctiveness suffices to fulfil the requirements of a CTMR.

• The expression “Super Step” does not enable the public concerned, namely the average consumer, to discern immediately and without further reflection the description of one characteristic of the goods claimed.

• The relationship between the expression “Super Step” and the goods claimed in Class 28 it too vague and indeterminate to confer that the term has clear descriptive character in relation to those goods.

• The expression “Super Step” suggests a variety of possible interpretations that do not directly describe the characteristics of the goods claimed.

• A consumer confronted by the mark would have to go through various mental steps and use imagination and thought to arrive at the interpretation of the expression “Super Step” by the examiner.

• Many Trade marks containing the expression “Super” or “Step” have been registered by OHIM, e.g. Speed Step; Baby step; Beautystep; Micro Step; Footsteps,; Little Steps; Super Shot; Super Age.

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)(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 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 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

The Office remains of the opinion that, contrary to what the applicant says the term is indeed descriptive of the kind and quality of the goods in question.

In the present case, the objectionable goods covered by the mark applied for are everyday consumption goods aimed at average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

Moreover, since the mark consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Community (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).

Having read the applicant’s submissions the Office remains of the opinion that taken as a whole, the words immediately informs consumers without further reflection that the goods are, or incorporate, an outstanding/exceptionally fine step mechanism. Consequently, there is nothing about the expression that might, beyond its obvious descriptive meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods designated. Therefore, the mark conveys obvious and direct information regarding the kind and quality of the goods in question.

The combined words the expression consists of provide a straightforward and clear message in relation to the goods concerned. There is nothing abstract about the expression “Super Step” as its semantic content, in relation to the goods applied for, is quite obvious.

Consequently, the meaning of the expression, as a whole, when applied to the contested goods is simply the sum of the individual terms and it will be perceived with that meaning. Therefore, the mark conveys obvious and direct information regarding the kind and quality of the goods in question.

The Office reiterates that according to Collins English Dictionary the meaning of “SUPER” is outstanding; exceptionally fine and thus will be understood in that sense by the relevant English-speaking public. Equally the term “STEP” defined in Collins English Dictionary as meaning the act of motion brought about by raising the foot and setting it down again in coordination with the transference of the weight of the body will also be understood by the relevant consumer in terms of the goods claimed as demonstrated by the Office in the Internet extracts provided in previous correspondence.

It has already been established that in regard to the contested goods the term “Step” is descriptive; therefore it is now necessary to consider whether or not the term “Super” can be considered descriptive in relation to “Step” and in relation to the goods claimed. The Office maintains that the mark as a whole is descriptive and non-distinctive for the reasons already given.

Therefore the Office is of the opinion that the term “Super” would be perceived as an indication of quality, and when the public perceives this term on any of the contested goods they will conclude that they are of a high quality as the public are likely to understand that the goods represent a premium line of goods. As such, the term “SUPER” directly embodies a sensible meaning in relation to all the goods in question. Consequently, the term “Super” will be perceived as laudatory information about the positive characteristics of the goods concerned and not as an indication of commercial origin. Therefore, the mark as a whole, namely “Super Step” in conjunction with the contested goods, is unable to serve to distinguish the goods of one undertaking from those of another undertaking. It cannot, therefore, perform the basic task of a trade mark.

Furthermore, the applicant attests that the expression “Super Step” suggests a variety of possible interpretations that do not directly describe the characteristics of the goods claimed. However, the applicant is reminded that 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 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.).

The expression applied for consists of the combination of two readily identifiable and ordinary words from the English language, namely “Super” and “Step”. 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. Therefore, there is no doubt that the relevant consumer will not perceive the words as unusual but rather as a meaningful expression in relation to the goods concerned.

Furthermore, the term “Super Step”, as a whole, 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 overall message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the contested goods on the basis that it is not vague in any way, nor does it lend itself to different interpretations and is it akin to an allusive fanciful sign in relation to the goods claimed.

As regards the argument that the relevant consumer would regard the mark “Super Step” as a distinctive badge of origin and not 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 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).

As regards the applicant’s argument that the Office has registered many trade marks containing the expression “Super” or “Step” e.g. Speed Step; Baby step; Beautystep; Micro Step; Footsteps,; Little Steps; Super Shot; Super Age, 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.

In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration as trade marks of signs composed of verbal elements, the present application was caught by grounds for refusal set out in Article 7(1) CTMR because of the goods in respect of which registration was sought and because of the way in which the sign, as a whole, would be perceived by relevant consumers (See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.).

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

It is clear from the case-law of the General Court 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 (see judgment of 27/02/2002, T-106/00, 'STREAMSERVE', paragraph 67).

Furthermore, the cases mentioned by the applicant cannot be compared on a par with this case, on the basis that none of them bear the term “Super Step”.

To reiterate, “Super” is defined in English dictionaries as meaning “outstanding; exceptionally fine” (See e.g. Collins English Dictionary). The combination of such a highly laudatory word with another descriptive word such as “Step”, applied on the goods claimed creates a term that is descriptive in relation to such goods.

The public will without a doubt make an immediate, definite and direct association between the goods and the meaning of the term. Whilst there might well be more apt terms to describe the goods in question this is irrelevant as the message conveyed by the term “SUPER STEP” is crystal clear.

Therefore, it derives from all the above that the applicant has not succeeded in convincing the Office that will be perceived by the consumers of the relevant goods as a fanciful enough sign pointing at the commercial origin of such goods.

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, the application for the Community Trade Mark is hereby rejected for all the goods claimed, namely:

Class 28 Treadmills; rowing machines; stair stepping machines; resistance machines; body inversion equipment; inversion tables; skateboards recreational equipment; weight lifting benches; exercise benches.

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.

Sam CONGREVE