Refusal of application for a European Union trade mark

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

Alicante, 06/07/2016

ADAMSONJONES

BioCity Nottingham Pennyfoot Street

Nottingham, Nottinghamshire NG1 1GF

REINO UNIDO

Application No:	015078116
Your reference:	6340/4074TEU
Trade mark:	ECO BLOX
Mark type:	Word mark
Applicant:	Harlaxton Engineering Services Limited Toll Bar Road, Marston Grantham Lincolnshire NG32 2HT REINO UNIDO

The Office raised an objection on 26/02/2016 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 26/04/2016, which may be summarised as follows:

1. The examiner has not fully considered how the word BLOX would be perceived by the relevant consumer, who would be a professional in the construction industry. Furthermore, the examiner has not fully considered whether the word BLOX would be distinctive in relation to the particular goods and services defined in the application.

2. According to the Examination Guidelines of the EUIPO, if the misspelling is fanciful and/or striking or changes the meaning of the word, the sign is acceptable.

3. The word BLOX is never used in the construction industry as a descriptive term for blocks. The only quasi-descriptive use of the word BLOX of which the applicant is aware of is in the toys and games industry, and in particular the computer games industry. In the construction industry, it is very rare for any type of slang to be used to refer to goods or services. Indeed, the use of the word associated with toys or the computer games industry would also be very unusual. The use of the word BLOX to refer to goods and services in the construction industry would therefore be striking, surprising and unusual, from the perspective of the relevant consumer.

4. The relevant consumer would perceive the trade mark to be striking, surprising and unusual in relation to the relevant goods and services, given the very different nature of goods and services in the construction industry to goods in the toy and computer games industries, and a descriptive meaning would not be immediately apparent to the relevant consumer, at least without further reflection.

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.

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In the notification of 26/02/2016, the Office defined the words of the mark as:

-ECO ‘denoting ecology or ecological’

-BLOX a misspelling of the word “blocks” which is the plural of “block” defined as ‘1. a large solid piece of wood, stone, or other material with flat rectangular sides, as for use in building; 2. any large solid piece of wood, stone, etc., usually having at least one face fairly flat’.

The applicant does not challenge these definitions but rather states that the word would be considered striking or unusual for the relevant consumer in the construction industry, and that the misspelled word is not used in that sector. However, the real question should be whether or not BLOX would be understood as BLOCKS, with the –x being used in place of the –cks.

In reply to the applicant’s arguments, it should be noted 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

It is clear that when the relevant consumer is confronted with the mark ECO BLOX in correlation with the goods of, for example, building and construction materials and elements of metal; building blocks (metal -); building blocks (non-metallic -); interlocking blocks (non-metallic) for building; masonry blocks; etc., the relevant consumer will undoubtedly understand the mark as ECOLOGICAL BLOCKS, and therefore, as a description of those very goods. If, according to the applicant, the relevant consumer of the gaming and toy industries can understand BLOX as BLOCKS, then a more professional consumer could surely also see BLOX as a misspelled version of the word BLOCKS, especially if this term is in combination with the applied for goods.

Also, as regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Moreover, it is important to remember that the term ECO BLOX would not be used just within the construction industry. The applicant has applied for goods in classes 6 and 19, and these most certainly would be sold within-but not limited to-the construction industry. But the applicant has also applied for services in class 37, i.e. construction services; construction of walls; block laying and masonry services. The purchasers of these services might be undertakings from the construction industry, but they are also just as likely to be undertakings, or persons, that are unfamiliar with the construction industry and its terminology and simply interested in constructing a building, a house, a factory, a parking garage, etc., or any other type of construction offered by the applicant. In this case, and according to the applicant, they would be much more accustomed to the misspelled use of the word BLOX.

For all of the reasons above, the mark clearly conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question. It follows that the link between the words ‘ECO BLOX’ and the goods and services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) CTMR.

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, taken as a whole, the mark applied for – ‘ECO BLOX’ – is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

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 015078116 is hereby rejected for all the goods/services 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.

Herbert JOHNSTON