Refusal of application for a European Union trade mark

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

Alicante, 28/02/2017

Katarzyna Binder-Sony

First Floor, 3 More London Riverside

London SE1 2RE

REINO UNIDO

Application No:	015517014
Your reference:	441656
Trade mark:	PROZIO
Mark type:	Word mark
Applicant:	Galaxy International, LLC 1307-B Evans Ave San Francisco California 94124 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 28/07/2016 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 25/11/2016, which may be summarised as follows:

• The term ‘Prozio’ is very rarely used in today’s Italian language and many (if not most) average Italian speaking persons are not aware of any of its meanings. However, if they ever came across this term they would need time to understand its meaning and it would mean to them at best a ‘grandparent’s relative’. This is the only translation shown by most of the reputable Italian-English dictionaries reflecting an understanding of a common person. They won’t be able to suspect it has any other meaning unless it is put in the context.

• The dictionary mentioned by the Office shows the meaning of ‘great-uncle’ in first place. There is one more very specific meaning of term ‘prozio’ being a plant.

• The mark applied for is a misspelling of the term ‘pròzio’.

• The applicant disagrees with the Office that specialists are the targeted group.

• The mark applied for at the utmost is a suggestive term.

• The applicant claims that not all the goods applied for can be made of hydrogen and, therefore, they should not be objected. The mark applied for is not purely descriptive with respect to the goods applied for.

• The applicant is the owner of the registered mark in the US for a word mark ‘PROZIO’ covering the same 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.

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.

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).

For a sign to fall within the scope of the prohibition of that provision, it must indicate a sufficiently direct and concrete link to the goods in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40 upheld on appeal by 05/02/2004, C-150/02 P, Streamserve, EU:C:2004:75 and 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

As regards the applicant’s argument that specialists are not the targeted group, the Office in its earlier notification specified that the relevant public consist of both, professionals and average consumers as the goods applied for are mass consumption goods and specialised goods.

As regards the applicant’s argument that the mark at issue has several meanings, the Office points 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, emphasis added).

As regards the national 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 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

The mark applied for will be perceived by the relevant consumers as a misspelling of the Italian term ‘pròzio’. The perception of a sign is not only visual, but also aural. When pronouncing the term ‘prozio’, the relevant Italian-speaking public will not recognize whether the letter ‘o’ bears an accent. The target public will, therefore, consider that the word has been misspelled. It is a well-known fact that consumers, when confronted with a word mark only for a moment, do not give any significance to misspellings or do not even notice them at all. In consequence, the fact that the sign applied for is written without the accent above the letter ‘o’, is not decisive and will not prevent the relevant consumers from perceiving the meaning of the word ‘pròzio’.

As a result, when the sign ‘prozio’ is applied to the goods concerned, the relevant public will consider immediately and without further thought that it concerns ‘pròzio’. The Office emphasizes that the specific meaning of the mark applied for must be determined in connection with the goods claimed. For the purpose of applying Article 7(1)(c) EUTMR, it is necessary only to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods in respect of which registration is sought.

Indeed, in contrast to the applicant’s assertion, the well-informed and observant relevant consumer will immediately perceive the sign as a designation of the essential characteristics of the goods. The Office is of the opinion that the sign will be observed as an informative expression that the goods in question are hydrogen based products. Such meaning is in line with, and corroborated by, the dictionary entry included in the Office’s notification of 28/07/2016.

Therefore, the sign, when applied to the claimed goods in Class 9, will be seen by Italian-speaking consumers as a meaningful, descriptive indication of the kind and quality of the goods in question. In view of the above, it is reasonable to believe that consumers will make a sufficiently clear link between the mark and the goods applied for in Class 9. Such a link leads consumers to perceive the descriptive message of the mark with respect to all the goods applied for. The message conveyed by the mark is not vague in some way or other; it is not imprecise or akin to a ‘suggestive’ sign, as claimed by the applicant.

Therefore, the Office finds that, for the Italian-speaking part of the public, the mark at issue affords a link with the goods to such an extent that this nexus is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and 7(2) EUTMR.

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 15 517 014 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.

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