Refusal of application for a European Union trade mark

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

Alicante, 19/04/2017

BERGENSTRÅHLE & PARTNERS STOCKHOLM AB

Ringvägen 100

SE-118 60 Stockholm

SUECIA

Application No:	016016024
Your reference:	72480
Trade mark:	CURRENCY
Mark type:	Word mark
Applicant:	Komori Corporation 11-1 Azumabashi 3-chome Sumida-ku Tokyo JAPÓN

1. The Office raised an objection on 24/11/2016 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.

2. The applicant was granted a two-month extension and submitted its observations on 24/03/2017; these may be summarised as follows:

• It is submitted that the mark is suggestive. Suggestive signs are often well functioning trademarks that will be able to distinguish one commercial origin of a product from others.

• A printer prints bank notes whereas the term CURRENCY in the business sector involved is an abstract term that relates to an exchange rate or the name of a certain coin, bill etc. such as USD, EUR or NOK. The end user does not print NOK but rather bank notes in the currency NOK.

• Attached are samples of actual use of the mark to illustrate that the sign in question is functioning well as a distinctive trademark.

• The machine CURRENCY is the only printing machine which prints bank notes in Japan. It is also used in other countries for printing their bank notes such as in France and England, as well as in several other countries outside of Europe. The applicant believes that the mark has acquired distinctiveness through use.

3. 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).

The Office maintains that the word CURRENCY is descriptive in relation to printing machines and apparatus.

There is nothing suggestive about the term CURRENCY in relation to printers that print bank notes. As already demonstrated in the objection letter, the word CURRENCY means, among others, a paper medium of exchange that is in current use in a particular country. In other words it may refer to bank notes.

Synonyms for the word CURRENCY are, among others, “cash”, “bills” and “notes”. See http://www.thesaurus.com/browse/currency

It may be that the word is more often used to refer to an exchange rate; however, when applied to printers of bank notes the mark lacks any distinctive character whatsoever. In the examples of use of the mark, the goods are even referred to as “currency presses” and “currency printers”. How could the mark CURRENCY applied to currency printers be distinctive?

It is clear form the attachments that the trademark of the applicant is KOMORI while the word “currency” is used descriptively to refer to a category of printing machines, namely printers of bank notes/currency. When not used descriptively in the text, the term CURRENCY is always accompanied by a model number such as the LC 32 or the 40 CP. No proper or obvious trade mark use of the word CURRENCY alone can be detected.

The applicant claims that the mark has acquired distinctiveness through use but no proof, such as turnover figures or surveys, has been submitted to that end. It should also be pointed out that any use of the mark outside of Europe is irrelevant.

In the absence of an additional distinctive word or figurative element, there is nothing about the mark CURRENCY that might enable the relevant public to perceive the mark as a distinctive trade mark originating from the applicant.

4. 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 16 016 024 is hereby rejected for the following goods:

Class 7 Printing machines and apparatus.

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.

Cecilia ALIN