Refusal of application for a European Union trade mark

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

Alicante, 14/03/2017

José Izquierdo Faces

Calle General Salazar, Nº 10

E-48012 Bilbao (Vizcaya)

ESPAÑA

Application No:	015973316
Your reference:	GTMZC-163755
Trade mark:	Power Fin
Mark type:	Figurative mark
Applicant:	Oriental Recreational Products (Shanghai) Co., Ltd. 1699 Daye Road, Wuqiao, Fengxian District Shanghai 201402 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 14/11/2016, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for all the goods applied for. The objection letter is attached.

The mark applied for is and is considered objectionable for all the goods claimed, namely:

Class 7 Starters for motors and engines; Engines for air cushion vehicles; Engines for boats; Motors for boats; Motors, other than for land vehicles; Exhausts for motors and engines; Radiators [cooling] for motors and engines; Mufflers for motors and engines; Dynamos; Current generators.

Class 12 Water vehicles; Electric vehicles; Boats; Yachts; Air cushion vehicles; Hydroplanes.

Class 28 Surfboards; Surf skis; Sailboards; Skateboards; Waterskis; body boards; paddleboards.

The applicant submitted its observations on 12/01/2017, which may be summarised as follows:

• The Trademark is distinctive and can perform the essential function of a Trademark, which is the one of identifying the origin of goods.

• The Trademark ‘Power Fin’ is a fantasy expression that can be suggestive but not descriptive of the protected goods, since the goods ‘fins’ are not protected by the Trademark application.

• The Trademark ‘power fin’ could be descriptive for the goods ‘parts and fittings for vehicles’ of the class 12 in which the fins are included but not for the goods applied for by the applicant in the class 12 ‘water vehicles; electric vehicles; boats; yachts; air cushion vehicles; hydroplanes’. The same argument can be applied for the goods of the Classes 7 and 28.

• The word ‘fin’ has also different meanings depending of the Language of the State Member, for examples in Spanish Language ‘fin’ means ‘end’ in English, in Italian means ‘from’ in English or in Romanian means ‘fine, soft, delicate’ in English Language.

• The word ‘power’ has not a meaning apart from English Language, so the understanding of the expression ‘power fin’ will vary depending of the Language of the State Member and in the most of the countries of the European Union where the English is not an Official Language this expression will be understood as a fantasy expression without any literal meaning.

• In addition the fins are goods that can or cannot be a part of the goods protected by my client, and the Office has rejected all the applied goods without making an analysis of whether the fins are an essential part of the goods applied for in the Trademark.

• The goods protected by the Trademark No. 15973316 are not everyday consumption goods but specialised goods that have a high market value aimed at a professional public, so the awareness of the relevant public will be very high.

• ‘Power Fin’ does not convey obvious and direct information regarding the kind and characteristics of the goods applied for, since the expression “Power fin” is not an obvious expression since it can be understood in very different manners like a powerful fin, the strength of a fin, the ability of a fish fin, among others in English Language and without meaning in the other languages of the European Union.

• We have observed the existence of European Union Trademark Registers that start with the word “POWER” together with other descriptive words and have been granted registration, for example the Trademarks ‘POWERMAX’, ‘POWER LUBE’, ‘POWELINE’, POWERCHAMBER’, ‘POWERCORE’.

• We have observed also the existence of European Union Trademark registers that end with the word “FIN” preceded by other descriptive words and have been granted registration, for example the Trademarks ‘SHORTFIN’, ‘BLUEFIN’, ‘YELLOWFIN’.

• We have also found the EUTM register No. 014168371 ‘POWER-FIN’ that is granted for the classes 9, 11, 35, if in this Trademark would followed the same criteria that it has been applied in our application this Trademark should have been denied for the classes 9, 11 since a fin can also be a part of the heaters and the goods protected by the class 11 in this Trademark.

• The consumer will be able of identify the origin of the goods protected by the Trademark ‘POWER FIN’ since it is a fantasy expression that does not inform directly to the consumer of the goods protected by its Trademark in the classes 7, 12 and 28.

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 which underlies 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 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 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, 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’, §34).

In the present case, the objectionable goods covered by the mark applied for are everyday consumption goods as well as specialised goods aimed at both the average consumer and a professional public. In view of the nature of the goods in question, the awareness of the relevant public will vary from average to high.

Moreover, since the mark consists of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The Office remains of the opinion that contrary to what the applicant says, the expression Power Fin is indeed descriptive of the kind and characteristics of the goods concerned.

It has to be put forward that the overall impression conveyed by the mark as a whole must be taken into account. Nevertheless, in so doing it is appropriate to consider each element of which the mark is composed and then assess whether the resulting whole is more than the sum of its parts (see 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39 and 43).

To reiterate, the Office remains of the opinion that taken as a whole, the words Power Fin immediately inform consumers without further reflection that the contested goods in Class 7 are, or are directly concerned with, motors/engines incorporating fin(s) and are intended for machines/vehicles, for example, in order to give power; and that the goods in Classes 12 and 28 have a fixed or adjustable part or appendage that resemble a fin that projects under water in order to provide stability and control enabling the goods concerned to travel at speed. There is nothing abstract about the expression Power Fin as its semantic content, in relation to the relevant goods is quite obvious. Thus, the meaning of the expression as a whole applied to the relevant goods is simply the sum of the individual terms and will be perceived with that meaning.

Consequently, the combined words the expression consists of provide a straightforward and clear message in relation to the goods concerned. There is nothing abstract about the expression Power Fin as its semantic content in relation to the goods applied for is quite obvious. Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind and characteristics of the goods in question.

It is noted that the applicant is of the opinion that the combination of terms applied for has different meanings depending of the language of the State Member, for examples in Spanish Language ‘fin’ means ‘end’ in English, in Italian ‘fin’ means ‘from’ in English and in Romanian ‘fin’ means ‘fine, soft, delicate’ in English Language. Furthermore, the applicant puts forward that the word ‘power’ has no meaning apart from in English Language, so the understanding of the expression ‘power fin’ will vary depending of the Language of the State Member and in the most of the countries of the European Union where the English is not an Official Language this expression will be understood as a fantasy expression without any literal meaning. The Office agrees with the applicant with regards to the terms applied for in languages other than the English language and thus the applicant’s findings are not disputed. However, the arguments presented are irrelevant on the basis that since the mark consists of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant English speaking consumer will not perceive the sign as unusual but rather as a meaningful expression in relation to the goods concerned.

Furthermore, whilst it is noted that the applicant submits that the trade mark ‘Power Fin’ is a fantasy expression that is merely suggestive rather than descriptive of the goods claimed, the Office is not persuaded that the application should be accepted.

The term Power Fin is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer. As a result, the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the goods at issue on the basis that it is not vague in any way, nor does it lend itself to different interpretations, nor is it akin to an allusive fanciful sign in relation to the goods concerned.

Moreover, the applicant is reminded 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 such as those in relation to which the application is filed, or of characteristics of those goods. 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 concerned (See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 32.).

Furthermore, it it has to be put forward 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 (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, 'Develey', paragraph 19).

It is on that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as a descriptive message and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 48).

The Office notes the applicant’s comments that the goods concerned are not everyday consumption goods but specialised goods that have a high market value aimed at a professional public, so the awareness of the relevant public will be very high. As such, the applicant appears to be suggesting that the relevant consumer would see the sign Power Fin 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.

There is no evidence to suggest that the relevant consumer in the area of the goods concerned would be particularly trade mark ‘educated’ or savvy and would instantly perceive Power Fin as a trade mark in relation to the contested goods rather than as a descriptive message in relation to the kind and characteristics of the goods.

Furthermore, on a similar note, it must be held that the fact that the relevant public is a professional 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 public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

Consequently, the Office remains of the opinion that it is reasonable to accept that the relevant consumer will make a clear link between the mark and the function of the goods and therefore perceive the descriptive message in the mark. Indeed, the mark not only directly embodies a sensible meaning in relation to the goods in question, but is also an expression that might profitably be employed for such goods. Moreover, It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods in question. However, that said, it is not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3).

Furthermore, the applicant submits that the Office has rejected all the applied goods without making an analysis of whether the fins are an essential part of the goods at issue. However, it has to be put forward that it is irrelevant whether the characteristics of the goods which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (See judgment of 12/02/2004, C 363/99, ‘Koninklijke KPN Nederland’, paragraph 102)

Furthermore, although the mark applied for contains figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they fail to endow the trade mark applied for as a whole with any distinctive character. These elements do not possess any feature that would allow the mark to fulfil its essential function in relation to the goods covered by the trade mark application (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 74).

Thus, The Office considers that it has sufficiently justified the objection. The Office provided dictionary references in its original objection and examined the meaning of the expression in relation to the goods in question. As a result, the Office came to the conclusion that the words Power Fin consist exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as a descriptive expression indicating to the consumer the characteristics of the goods concerned. As such, the expression applied for will be perceived as meaningful, on the basis that when used on the goods concerned, the mark Power Fin as a whole, directly informs, in a descriptive way, the kind and key characteristics of the goods.

Consequently, there is nothing in the expression Power Fin that might, beyond its obvious descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods at issue. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense.

As regards to the applicant’s argument that similar registrations containing the word POWER or FIN and POWER-FIN have been accepted by the EUIPO, it has to be put forward that according to settled case law, ‘decisions concerning the registration of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T 36/01, ‘Surface d’une plaque de verre’, paragraph 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 67).

In any case, as to the applicant’s reference to other registered marks, it must be stated that the EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law. Even though the principle of equal treatment must be applied, it must be applied in a way consistent with the principle of legality. For reasons of legal certainty and precisely of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered.

Moreover, such an examination must be undertaken in each individual case depending on the factual circumstances and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T- 248/11, Pure Power, EU:T:2013:333, § 50; 10.03.2011, C-51/10 P, 1000, EU:C:2011:139, § 73 to 77). Consequently, an applicant cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76, 77; 12/02/2009, C-39/08 & C-43/08, Volks. Handy, EU:C:2009:91, § 18).

With regard to the previous EUTM registrations to which the applicant has referred, the Office of course should strive for consistency and apply the same criteria to the examination of trade marks. However, it follows from T-554/12, § 65, (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 65) that the Office cannot be bound by previous decisions. Pursuant to settled case-law, decisions concerning the registration of a sign as a EUTM are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a EUTM must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of previous Office practice or that of the Boards of Appeal.

Furthermore, the examination of absolute grounds for refusal must be full and stringent (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59), and may not just consist of the mere repetition of supposedly comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T- 106/00, Streamserve, EU:T:2002:43, § 67).

The content of the previous paragraph also applies even if the sign in respect of which registration is sought as an EUTM is composed in a manner identical to that of a mark in respect of which the Office has already approved its registration as an EUTM and which relates to goods identical or similar to those in respect of which registration of the sign in question is sought (07/10/2015, T-244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56).

In conclusion, the argument in the present case concerns whether Power Fin can be registered as a trade mark for the contested goods claimed in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the term is likely to convey to a relevant consumer of those goods, in particular the English-speaking consumer. The Office is of the viewpoint that the objection has been fully explicated.

The Office confirms, for the reasons already given, that the mark Power Fin conveys obvious and direct information regarding characteristics of the goods in question. The Office has to put forward that when the mark Power Fin is used in connection with the contested goods it is reasonable to accept that the relevant consumer is highly likely to perceive the term in a descriptive non-distinctive sense rather than as a badge of sole trade origin.

Consequently, for the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for 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.

Sam CONGREVE