Refusal of application for a European Union trade mark

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

Alicante, 18/08/2017

ROSCHIER BRANDS, ATTORNEYS LTD.

Keskuskatu 7 A

FI-00100 Helsinki

FINLANDIA

Application No:	016557407
Your reference:	TM9650EU00
Trade mark:	MY DIESEL
Mark type:	Word mark
Applicant:	Neste Oyj Keilaranta 21 FI-02150 Espoo FINLANDIA

The Office raised an objection on 24/04/2017 pursuant to Article 7(1)(b) and (g) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character and deceptive for the reasons set out in the attached letter.

The applicant submitted its observations on 14/06/2017, which may be summarised as follows:

1. The applicant requests to limit the list of goods and services to waive the objection under Article 7(1)(g) EUTMR.

2. The mark is surely suggestive but as a combination it is unusual. In the present case, the goods and services applied for are concerning goods such as diesel oils and diesel fuels for which one cannot normally use the possessive determiner MY, such as "my car". Someone having their own diesel fuel or diesel oil is not common. The goods are not something people generally possess, carry with them or something one could sell forward. One cannot produce diesel oil or diesel fuel at home. Diesel fuel or diesel oil is something quite abstract. Thus, there is no such thing as "MY DIESEL". The word MY does not highlight any positive aspects of the goods and services concerned, or any other aspects whatsoever.

The mark ‘MY DIESEL’ is suggestive and has at least a minimum degree of distinctive character.

3. The Office has in its prior practice registered a larger number of word marks which are consisting of a prefix "MY" together with a suggestive or descriptive word element in respect of the goods and services the mark has been applied for.

In addition, the applicant's national trademark application for the word mark ‘MY DIESEL’ has already been registered in Finland on 3 February 2017 under the registration number 268625. The trademark application in Finland was filed for the identical list of goods and services as covered by the subject EUTM application.

There are similar examples from other national trademark offices in the EU as well. For example, the Intellectual Property Office of the United Kingdom has registered the trademark ‘MYFUEL’ No. 2412545 covering, inter alia, "fuel bunkering services, fuel and lubricant storage services; arranging for the storage of fuels and lubricants" in class 39.

The Office should take the prior registration practice into consideration also because it reflects the current situation on the market. There are many companies using the prefix MY in their trademarks to distinguish their goods and services from other entities' products. The applicant has attached extracts of such websites.

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.

According to the applicant’s instructions the list of goods and services has been amended to reads as follows:

Class 4 Fuels produced from renewable raw materials; diesel fuels and diesel fuels produced from renewable raw materials; diesel oils; diesel oils produced from renewable raw materials; biodiesels; biofuels, fuels for transportation vehicles, fuels for water vehicles, biofuels for water vehicles, fuels for water vehicles produced from renewable raw materials.

Class 35 Retail sale of fuels, fuels produced from renewable raw materials, biofuels, diesel oils, diesel oils produced from renewable raw materials, biodiesels, traffic fuels, and traffic fuels produced from renewable raw materials

Due to the limitation, and because all the goods objected to under Article 7(1)(g) have been removed, the Office waives the objection raised under Article 7(1)(g) EUTMR.

The observations submitted by the applicant on 14/06/2017 have been given full consideration. However, in spite of the observations and the limitation of the list of goods and services the Office maintains the objection raised under Article 7(1)(b) EUTMR and Article 7(2) EUTMR and refuses the application in its entirety for the following reasons.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The applicant argues that the combination “MY DIESEL” is unusual and therefore it is suggestive and has at least a minimum degree of distinctive character.

The Office disagrees with the applicant.

Prefixing the possessive pronoun ‘MY’ does not change the descriptive content of the word ‘DIESEL’ or the non-distinctive meaning of the word sequence ‘MY DIESEL’ in any way. The possessive pronoun is intended to address the consumer directly and expresses the fact that the consumer will find an offer that is especially relevant to him/her (18/01/2015, R1795/2015-4, MYWALLSCREEN, § 19 and 03/10/2016, R 281/2016-4, mycard2go, § 13). As can be seen from the list of goods and services, there are different kind of (diesel) fuels/oils and different kind of purposes for the fuels/oils. There are, for example, petroleum diesel and biodiesel and diesel is used, for example, in transportation or water vehicles. Therefore, the sign ‘MY DIESEL’ directly conveys to the relevant public that the goods and services concerned specifically correspond or are adapted to their wishes/needs or are especially relevant to them in particular.

Furthermore, the Office considers it important to differentiate the current application from the mark ‘BABY-DRY’ as confirmed to be registrable by the ECJ (judgment of 20/09/2001, C-383/99 P, BABY-DRY, EU:C:2001:461). A combination such as ‘MY DIESEL’ is grammatically correct and comprehensible in English, to denote that the objected goods and/or services are diesel oils/fuels and/or are meant for diesel engine/diesel vehicle and/or retail services relating to such products, and that they are something that I (the customer) would choose and that they would best suit my (the customer) need, whereas ‘baby dry’ is an invented concept (‘lexical invention’). In combination, the words ‘MY’ and ‘DIESEL’ present no unusual features, nor do they represent a ‘play on words’. The combination of the words ‘MY’ and ‘DIESEL’ does not have the result that the sign ‘MY DIESEL’, considered as a whole, represents more than the sum of its parts.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Furthermore, the registrations of European Union trade marks starting with the term ‘MY’, as cited by the applicant do not reflect a practice of the Office’s Examination Division to register all such corresponding marks. In this respect, the Office refers to various refusals of marks starting with the term ‘MY’ based on Article 7(1) EUTMR, for instance the EUTM applications No 11 096 898 ‘MyDrive’, No 11 646 965 ‘myFitApp’, No 11 553 195 ‘MY TRANSLATOR’, No 11 418 861 ‘myDriveAssist’, No 11 185 501 ‘mygroceries’, No 15 051 212 ‘MYHOSPITAL’, No 15 479 901 ‘mywedding’, No 15 499 461 ‘my Testament’, No 15 726 367 ‘My Blender’, No 15 623 564 ‘MYSUPPLY’, No 15 860 471 ‘myVET’, No 15 997 943 ‘MyChauffeur’, No 16 132 871 ‘myholidaysearch’, No 16 135 824 ‘mydoctor24’ or No 16 278 483 ‘my-forum’.

As regards the national decisions 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 examples of the current market practice regarding companies using the prefix ‘MY’ in their trade marks are not able to convince the Office that the possessive pronoun ‘MY’, when it refers to a personalised feature, would in general be perceived as possessing a trade mark feature if combined with another non-distinctive term.

In conclusion, the expression ‘MY DIESEL’ lacks even a minimum degree of distinctive character within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 557 407 is hereby rejected for all the goods and services 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.

Monika Karolina SZALUCHO