Refusal of application for a European Union trade mark

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

Alicante, 21/04/2016

CURELL SUÑOL S.L.P.

Via Augusta 21

E-08006 Barcelona

ESPAÑA

Application No:	014974315
Your reference:	CTM/S-4730
Trade mark:	MINEPRO
Mark type:	Word mark
Applicant:	MLT - MINET LACING TECHNOLOGY S.A. Z.I. du Clos Marquet, Rue Michel Rondet F-42400 SAINT-CHAMOND CEDEX FRANCIA

The Office raised an objection on 27/01/2016 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 24/03/2016, which may be summarised as follows:

1. The classification of the goods has been amended

2. The mark is distinctive and non-descriptive

3. The Office has artificially dissected the mark

4. The words ‘MINE’ and ‘PRO’ have other meanings

5. The goods have nothing to do with mining

6. The mark has been accepted in other offices.

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.

The classification of the goods has been amended

The Office takes due cognisance of the new classification and conforms that the objection is directed against all the goods namely:

Class 06 Metal belt fasteners; metal fasteners for junction points of conveyor belts.

Class 07 Devices for attaching conveyor belt fasteners at conveyor belts (parts of machines); machine-tools for fitting conveyor belt fasteners in conveyor belts; metal conveyor belt fasteners.

The mark is distinctive and non-descriptive

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.1’, 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, 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).

The Office has artificially dissected the mark

The applicant argues that the Office has artificially dissected the mark into ‘MINE’ and ‘PRO’. The Offices refutes these claims.

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).

The word is clearly composed of two words which have not been separated with a space. Consumers in the relevant territories will view the mark as two conjoined words. The dissection was not done in an arbitrary and artificial manner but rather in a logical way. Consumers are used to see conjoined words on labels and on trade marks and will immediately perceive two separate words which are however conjoined.

The words ‘MINE’ and ‘PRO’ have other meanings

The applicant argues that the mark has several meaning because the word ‘MINE’ and ‘PRO’ have several meanings. The Office does not contest the fact that these words have several meanings, however the Office disagrees with the applicant’s argument that the mark will be understood in a different way.

The meaning of the mark in conjunction with the goods its seeks to protect conveys a clear meaning. The goods are professional mining goods. The fact that ‘MINE’ might mean ‘belonging to me’ or an ‘explosive device’ is irrelevant. It is also irrelevant that ‘PRO’ might mean ‘in favour’ or the abbreviation for ‘Public Relations Officer’. What is relevant is that the combination is understood in a descriptive and non-distinctive way for the goods applied for.

The Office notes that 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

Another argument brought by the applicant is that the word does not appear in dictionaries. As it has been exemplified earlier on, a mark can lack distinctiveness and be descriptive even if the word does not appear on dictionaries.

The goods have nothing to do with mining

The applicant holds that the goods have nothing to do with mining, because they are not mining tools or machinery. The Office is not convinced by the arguments of the applicant. The fact that they are not mining machinery is secondary. The goods applied for are meant to be used in the mining industry. Thus the word cannot function as a trade mark, because there is nothing distinctive about the mark. It simply states the intended use of the mark and gives clear indication regard the quality of the goods.

The mark has been accepted in other Offices

The applicant holds that the same mark has been accepted in Canada and in the US.

As regards the national decisions 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.)

The EUTM is a distinct system from the Canadian and the US system. Thus the fact that the same mark was accepted in these territories, does not impinge on or bind the Office in any way.

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 14 974 315 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.

Alistair BUGEJA