Refusal of application for a European Union trade mark

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

Alicante, 18/04/2017

Markéta Pravdová

Na příkopě 859/22

CZ-110 00 Praha 1

REPÚBLICA CHECA

Application No:	015956816
Your reference:
Trade mark:	FlexiPlugins
Mark type:	Word mark
Applicant:	Halgard Stolte Kaiserstraße 15a D-3254 Bad Oeynhausen ALEMANIA

The Office raised an objection on 14/11/2016 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 11/01/2017, which may be summarised as follows:

1. The mark at issue represents a neologism and therefore it is not descriptive or devoid of any distinctive character.

2. There should be a distinction between the different perceptions of the relevant public.

3. There is no sufficient direct and concrete link between the mark and the goods for which registration is sought.

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.

General remarks on Article 7(1) EUTMR

According to settled case-law, separate examination of each of the grounds for refusal to register listed in Article 7(1) EUTMR is required. 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).

Pursuant to Article 7(1) EUTMR, the sign is ineligible for registration as a European Union trade mark if any of the absolute grounds for refusal listed is applicable. Each of the grounds for refusal listed in Article 7(1) EUTMR has to be looked at independently of the others and calls for separate examination (21/10/2004, C 64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 39 and 15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 29).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered. The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

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.

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).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive (29/04/2004, C 456/01 P & C 457/01 P, Tabs (3D.), EU:C:2004:258, § 45 and 46). Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively.

Observations of the Applicant

1. The mark at issue represents a neologism and therefore it is not descriptive or devoid of any distinctive character.

The applicant argues that the combination of the words ‘FLEXI’ and ‘PLUGINS’ represents a neologism; a unique and fanciful combination of possibly suggestive and evocative words. According to the applicant the mark ‘FlexiPlugins’ as a whole does not express any functionality, characteristics, or purpose of the goods applied for and the relevant public will not immediately understand the sign as providing information about the goods in question.

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).

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 (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). 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).

The word mark ‘FlexiPlugins’ applied for, is composed exclusively of two words that are common in the English-speaking community. The conjoining of these two descriptive words does not imbue the mark with distinctiveness since it fails to sufficiently disguise the obvious message conveyed by the mark; the mark will be immediately interpreted as meaning ‘Flexi Plugins’ by the relevant English-speaking consumer. The term ‘FLEXI’ can be used as an affix in compound words to mean ‘FLEXIBLE’, a definition which is undisputed by the applicant. In the Information Technology sector, the word ‘FLEXIBLE’ refers to hardware or software, or a combination of the two and/or describe a device or program that can be used for multiple purposes, rather than a single function. The word ‘PLUGINS’ consists of the plural form of the word ‘plugin’ or ‘plug-in’ with the meaning of an item of hardware or software module designed to enhance or add a specific feature or service to a larger system or application. The idea is that the new component simply plugs in to the existing system. Therefore, the neologism ‘FlexiPlugins’ is composed of ordinary, readily identifiable English words; it is intellectually meaningful, grammatically correct and the public addressed will easily understand the meaning of these words. Merely putting these two generic words together without any significant figurative or semantic modification does not imbue them with any additional characteristics that could render the mark, when taken as a whole, capable of distinguishing the applicant’s goods from those of other undertakings. Therefore, the combination ‘FlexiPlugins’, as a whole, does not represent more than the mere sum of its parts (25/04/2013, T 145/12, Eco Pro, EU:T:2013:220, § 29). The combination is neither unusual nor fanciful, nor does it create 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, and so it cannot be considered a distinctive neologism (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). Therefore, the Office remains of the viewpoint that the mark is readily intelligible and not sufficiently fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer in relation to the goods in question.

Regarding the applicant’s argument that the word ‘FLEXI’ refers to a printing technique (FLEXOprint) and that the word ‘Plugins’ refers to relevant supportive software, 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).

Furthermore, the assessment of the mark is conducted in relation to the goods for which registration is sought. In respect to computer software applications, downloadable; computer programmes, recorded; computer operating programs, recorded; computer software, recorded; computer programs [downloadable software], the expression ‘FlexiPlugins’ will be clearly perceived by the relevant public with the meaning given in the notice of grounds for refusal of 14/11/2016: computer software applications and/or programs that can be composed of plug-ins used for multiple purposes rather than a single function. Therefore, the mark conveys obvious and direct information regarding the kind, a feature and the intended purpose of the goods in question.

2. There should be a distinction between the different perceptions of the relevant public.

The Applicant argues that the goods concerned tend to be purchased by professional consumers who are formed of leading printing houses across Europe and have specialised pre-press department and thus, consider software for their print production. As such, the applicant appears to be suggesting that as the goods concerned are likely to be a considered purchase, the relevant public would undertake the relevant purchase with a higher than average level of care and attention resulting in a heightened level of awareness and consequently the relevant consumer would see the sign ‘FlexiPlugins’ as a badge of sole trade origin and not as a descriptive/non-distinctive term in relation to the goods concerned. Regretfully, the Office cannot agree with this viewpoint.

The Office remains of the opinion that the relevant public is specified as both average consumers and a professional public. The relevant public’s degree of attention depend, inter alia, on the nature of the relevant goods and the knowledge, experience and purchase involvement of the relevant public. Therefore, in the light of the nature of the goods in question, the awareness of the relevant public will on the one hand be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect and on the other hand high for the professional public.

The Office cannot agree with the applicant’s argument that the average consumer does not have the knowledge to make a link between the mark and the goods for which registration is sought. The goods in question, such as computer software applications and computer programmes, are not exclusively intended for a specialised public, but are also intended for the average consumer who deals with information technology sector. It should be noted that, nowadays, several terms related to hardware/software are commonly recognised as a result of the growth of the internet and the use of computers in various fields. Equipment used for purposes of upgrading or better functioning, such as flexible plugins for multiple uses, are considered mass consumption products and are also aimed at average consumers apart from specialists in the IT field.

Furthermore, on a similar note, it must be held that the fact that the contested goods concern also a specialized public 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 even where the relevant public is specialist (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

As regards the applicant’s argument that there is not a valid proof that the relevant public will perceive the sign as providing information about the quality or characteristics of the goods at issue, the Court has confirmed 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… In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

3. There is no sufficient direct and concrete link between the mark and the goods for which registration is sought.

The Office disputes the applicant’s claim that the mark, ‘FlexiPlugins’, will not be associated with the objected goods in Class 9.

The mark ‘FlexiPlugins’ does have a clearly defined meaning (as already pointed out above and in the notice of grounds for refusal of 14/11/2016), namely flexible plugins.

Applied to the goods at issue, id est computer software applications, downloadable; computer programmes, recorded; computer operating programs, recorded; computer software, recorded; computer programs [downloadable software], the expression ‘FlexiPlugins’ is descriptive and totally devoid of any distinctive character. The message conveyed by the mark as a whole is direct, clear and impossible to miss. The relevant consumer is not required to apply any mental process to grasp the message conveyed by the mark applied for, the meaning of the mark is clear and unambiguous: software application and/or computer programs that refer to or might be composed of plugins that can be used for multiple purposes, rather than a single function such as they add a specific additional feature to an existing computer program. The combination of these two elements results in a rather comprehensible, meaningful expression. Therefore, the mark will be perceived by the relevant public as a merely descriptor of the kind, feature and the intended purpose of the goods concerned rather than as an indication of trade origin.

For the sake of completeness, it should be noted that the Office examines primarily the mark’s inherent distinctiveness. Therefore, the applicant’s argument that the relevant customers and partners that have more than 20 years of experience in this field may consider the mark at issue as a registered trade mark, will be set aside as irrelevant. As previously mentioned, the Office examines the overall inherent distinctiveness of the mark applied for and only, if claimed, the acquired distinctiveness as a consequence of the use the opponent has made of it in accordance with Article 7(3) EUTMR.

Further proceedings

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 15 956 816 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.

Michele M. BENEDETTI-ALOISI

Enclosure: Notice of ground for refusal of 14/11/2016.