Refusal of application for a European Union trade mark

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

Alicante, 28/09/2017

BOULT WADE TENNANT

Verulam Gardens

70 Gray's Inn Road

London WC1X 8BT

REINO UNIDO

Application No:	016614315
Your reference:	EJP/T153684EM00
Trade mark:	ROCLEAN
Mark type:	Word mark
Applicant:	Avista Technologies, Inc. 140 Bosstick Boulevard San Marcos California 92069 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 24/04/2017 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 23/08/2017, which may be summarised as follows:

1. The meaning of the mark is not clear

2. The mark has been accepted by the Office and other national Offices

3. The only use of the mark ‘ROCLEAN’ is from the applicant

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 meaning of the mark is not clear

The applicant argues that the meaning of the mark is not clear. Although it acknowledges that the letters ‘RO’ stand for ‘reverse osmosis’ and ‘clean’ has a very clear meaning. It holds that the combination of both, together with the fact that the words are conjoined make the word mark distinctive for the goods applied for – chemicals. The Office however is not convinced by these arguments. Although the words are conjoined it is natural for consumers to dissect words. The mark in relation to the goods applied for, renders the mark descriptive and non-distinctive because English speaking consumers in the EU will understand such a word as some form of chemical that allows its users to clean the reverse osmosis. Reverse osmosis can be both domestic and industrial, therefore one has to take into account the relevant consumers can be both the average consumer, but also the professional public. Despite the high level of attention professional public might have, the mark is still considered to be lacking distinctiveness and is also descriptive. The mark will be perceived as a direct reference to the chemicals applied for, which chemicals can be used to clean reverse osmosis.

The applicant also argues that the mark is a play on words, is surprising and requires an interpretation effort. However, the Office believes that this is not the case. There is nothing about the mark which is surprising or which can be considered to be a play on words. The Office holds that the English speaking average consumer will understand the meaning of the mark effortless because the meaning of the mark is clear and unequivocal.

The mark has been accepted by the Office and other national Offices

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).

Thus, the fact that the mark applied for, has been registered in the UK and the US, does not automatically render the mark registerable under the EUTM system.

Furthermore, 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).

The only use of the mark ‘ROCLEAN’ is from the applicant

As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Thus, the fact that the applicant claims that an Internet search for ‘ROCLEAN’ will only return results from the applicant himself does not render the mark distinctive or non-distinctive.

The Office believes that the mark is clear and unequivocal to any English speaking consumer in the EU. The fact that the words ‘RO’ and ‘CLEAN’ are conjoined does not alter the distinctiveness of the mark.

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 16 614 315 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.

Alistair BUGEJA