Refusal of application for a European Union trade mark

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

Alicante, 13/09/2017

ASHFORDS LLP

Ashford House Grenadier Road

Exeter EX1 3LH

REINO UNIDO

Application No:	016711707
Your reference:	DPC/CSQ/246694-100
Trade mark:	DUAL-GARD
Mark type:	Word mark
Applicant:	Tekni-Plex, Inc. 460 E. Swedesford Rd., Suite 3000 Wayne Pennsylvania 19087 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 19/06/2017 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 14/08/2017, which may be summarised as follows:

1. A clarification of the goods covered by the application has been submitted by qualifying the goods as being for ‘closure’.

2. It is disputed that the element ‘GARD’ in the mark will be understood as a mere indication of something that “provides or is intended to provide protection” in the context of the goods applied for. That is neither the specific purpose of the goods, nor indicative of any of their essential characteristics.

3. The term ‘GUARD’ has a variety of different meanings. It is submitted that it would be unconventional for the term to be used to denote a concrete objection, such as a seal or a liner in the literal sense of something that “provides protection”.

4. Furthermore, it is asserted that the mark applied for features the invented word ‘GARD’ and not ‘GUARD’. ‘GARD’ is not defined in the online Collins English Dictionary as a phonetic misspelling of ‘GUARD’.

5. The consumer is unlikely to arrive at the meaning suggested immediately and without further thought and reflection when confronted by the mark DUAL-GARD, and would require a degree of effort and analysis in the ordinary course of purchasing the goods in question.

6. The fact that the mark should hold positive associations, in an allusive manner, is not sufficient to support an objection under Article 7(1)(c).

7. With regard to the objection under Article 7(1)(b), it is argued that that lack of clear and precise meaning in relation to the goods and their characteristics renders the mark ambiguous and no more than allusive.

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)(c) EUTMR

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).

Specific remarks concerning the observations of the applicant

1. A clarification of the goods covered by the application has been submitted by qualifying the goods as being for ‘closure’.

The request for clarification to the goods has been noted by the Office and the limitation applied accordingly.

2. It is disputed that the element ‘GARD’ in the mark will be understood as a mere indication of something that “provides or is intended to provide protection” in the context of the goods applied for. That is neither the specific purpose of the goods, nor indicative of any of their essential characteristics.

The Office responds that the element ‘GARD’, as a phonetic equivalent of ‘GUARD’, in relation to the goods applied for would convey to the consumer a characteristic of the goods applied for. For products such as closure seals and closure liners, the word communicates the fact that these goods can protect that which is held within the containers from outside contamination and keep them safe and sterile. In this respect the word ‘GARD’ in the mark, as a phonetic variation of the word ‘GUARD’ indicates to the consumer a desirable quality of the goods in question, in that they will protect the contents of the containers from contamination or from spoiling.

3. The term ‘GUARD’ has a variety of different meanings. It is submitted that it would be unconventional for the term to be used to denote a concrete objection, such as a seal or a liner in the literal sense of something that “provides protection”.

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, emphasis added.)

4. Furthermore, it is asserted that the mark applied for features the invented word ‘GARD’ and not ‘GUARD’. ‘GARD’ is not defined in the online Collins English Dictionary as a phonetic misspelling of ‘GUARD’.

The Office notes that the mark contains the element ‘GARD’ but asserts that this would clearly be perceived as a misspelling of the dictionary word ‘GUARD’.

A misspelling does not necessarily change the descriptive character of a sign. First of all, words may be misspelt due to influences of another language or the spelling of a word in non-EU areas, such as American English, in slang or to make the word more fashionable. Examples of signs that have been refused:

- ‘Xtra’ (decision of 27/05/1998, R 0020/1997-1),

- ‘Xpert’ (decision of 27/07/1999, R 0230/1998-3),

- ‘Easi-Cash’ (decision of 20/11/1998, R 0096/1998-1),

- ‘Lite’ (judgment of 27/02/2002, T-79/00, Lite, EU:T:2002:42),

- ‘Rely-able’ (judgment of 30/04/2013, T-640/11, Rely-able, EU:T:2013:225),

- ‘FRESHHH’ (judgment of 26/11/2008, T-147/06, Freshhh, EU:T:2008:528).

As a rule, misspellings endow the sign with a sufficient degree of distinctive character when:

- they are striking, surprising, unusual, arbitrary and/or,

- they are capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to.

In the case of the present application, the Office does not consider the word ‘GARD’ to be sufficiently unusual or different from the word ‘GUARD’, either aurally or visually, as to deviate from the meaning of that word.

5. The consumer is unlikely to arrive at the meaning suggested immediately and without further thought and reflection when confronted by the mark DUAL-GARD, and would require a degree of effort and analysis in the ordinary course of purchasing the goods in question.

The Office asserts that, given the clear meaning of ‘GARD’ as expanded upon above, the mark in totality would not present the relevant consumer with an intellectual challenge when confronted by the mark. The combination of the words which in effect would be perceived as ‘Dual Guard’ would clearly indicate the kind of goods on offer, being closure seals and liners that are composed of metallic foil material but comprised of more than one non-metallic layer for extra protection. Therefore, ‘dual’ would be seen as referring to the two different types of closure material that make up the goods and ‘gard’ – seen as ‘guard’ – indicates the purpose; to guard (protect) the contents of the containers by means of two combined methods of sealing and closing.

6. The fact that the mark should hold positive associations, in an allusive manner, is not sufficient to support an objection under Article 7(1)(c).

The Office does not agree with this argument and asserts that the mark would be seen as descriptive rather than allusive. The application is not on a par with the case quoted (T67/0/, Ford Motor Co. v OHIM (FUN trade mark), as the mark conveys positive attributes of characteristics of the goods, but not “indirectly and in an abstract manner”, making it clearly more descriptive than evocative of the goods in question.

7. With regard to the objection under Article 7(1)(b), it is argued that that lack of clear and precise meaning in relation to the goods and their characteristics renders the mark ambiguous and no more than allusive.

As asserted above, the Office considers the mark clearly descriptive for the goods applied. Therefore, the impact of the mark on the relevant public being primarily descriptive in nature will eclipse any impression that the mark could indicate a trade origin.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

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 016711707 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.

Lance EGGLETON