Refusal of application for a European Union trade mark

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

Alicante, 11/10/2016

John Philip Hanna

HANNA IP

4th Floor, 58 Howard Street

Belfast BT1 6PJ

REINO UNIDO

Application No:	015323901
Your reference:	T10297.KLL.EU
Trade mark:	KEYTRUSS
Mark type:	Word mark
Applicant:	Keystone Lintels Limited Ballyreagh Industrial Estate Sandholes Road Cookstown, County Tyrone, Northern Ireland BT80 9DG REINO UNIDO

The Office raised an objection on 26/05/2016 pursuant to Articles 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for, KEYTRUSS, is descriptive and devoid of any distinctive character for the goods applied for, for the reasons set out in the attached letter.

The applicant submitted its observations on 26/09/2016 which may be summarised as follows:

1. Although each of the words ‘key’ and ‘truss’ is descriptive, the compound word KEYTRUSS is not descriptive and is distinctive. There is no immediate connection between the mark applied for and building materials. KEYTRUSS is merely suggestive of a framework of crucial importance.

2. In multiple loadbearing trusses no one truss would be considered of greater support than another.

3. The combination KEYTRUSS is not found in English dictionaries, nor is it used in common parlance or in technical terminology pertaining to the construction industry or similar industries. Furthermore, the word ‘key’ is not associated with building materials.

4. Too much mental effort is needed to conclude that the mark indicates that the goods are trusses necessary to support a structure.

5. A mark cannot be considered non-distinctive merely because it lacks an additional element of originality or imagination.

6. The goods are aimed at business consumers and professional tradespeople whose level of attention is likely to be higher than average.

7. Use of the mark KEYTRUSS has been found only by one other company in relation to design software for the construction of roof trusses.

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 for all the goods applied for except for metal clips and strips that affix to gutters for installation to home or structure; parts and fittings for all the aforesaid goods; all included in class 6 in Class 6 and non- metal wall panels; parts and fittings for all the aforesaid goods, in Class 19.

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 services 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).

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 (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

‘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 services in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

As previously mentioned, the trade mark KEYTRUSS contains words with the following meanings:

KEY:

adjective

of great importance; crucial

TRUSS

noun

1. a structural framework of wood or metal, esp one arranged in triangles, used to support a roof, bridge, etc

Information extracted from the online Collins English Dictionary at http://www.collinsdictionary.com/dictionary/english/ on 26/05/2016.

The relevant consumer will understand the combination KEYTRUSS as meaning: a crucial structural framework of wood or metal used to support a roof, bridge, etc. and thus, when seeing the mark on the goods, he is immediately informed that the goods applied for are framework or parts of framework (trusses), necessary to support a structure or for use with these goods. Thus the mark gives obvious and direct information on the kind and purpose of the goods. The Office does not agree that several mental steps are needed to arrive at this meaning. Furthermore, regarding the applicant’s argument that in multiple loadbearing trusses, no one truss would be considered of greater support than another, it is considered that there could be more than one truss in a building, perhaps in extensions to this building.

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

In the case at hand, as said, it has been found that the coupling of two meaningful elements does not result in a fanciful term. On the contrary, it is considered that the new expression still retains the meanings of its two constituent parts and conveys a sense which is logical and easily perceptible by anyone.

As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C 363/99, ‘Postkantoor’, ECLI:EU:C:2004:86, § 86).

Regarding the applicant’s observation that the combination KEYTRUSS is not found in English dictionaries, common parlance or technical terminology related to construction or similar industries and that the word ‘key’ is not used in connection with building materials, it is pointed out 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).

With regard to the applicant’s claim that the attention of the professional public will be high it must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

As regards the applicant’s argument that only one other company makes 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 services 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).

Thus, whereas a mark does not have to possess a high level of linguistic or artistic creativity or imaginativeness, it must be capable of indicating the origin of the goods, which for the reasons above, it does not do in the case at hand.

Therefore, for the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 15 323 901 is hereby rejected in part for:

Class 6: Metallic nail plates; metal building components; modular portable building structures (metal); modular portable building units of metal; modular portable building units of metal for construction into relocatable buildings; modular structural units of metal for the construction of prefabricated buildings; metal roof trusses; metal attachments for installations, namely, brackets, screws, spacers, trusses, and truss members; parts and fittings for all the aforesaid goods; all included in class 6.

Class 19: Non-metallic building materials; non-metal roof and floor trusses; timber, at least semi-worked, in particular beams, boards, panels and/or trusses; non-metallic nailplates for the assembly of roof trusses; parts and fittings for all the aforesaid goods; all included in class 19.

The application may proceed for the remaining goods.

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.

Deirdre QUINN