Decision on the inherent distinctiveness of an application for a European Union trade mark (Article 7 EUTMR)

Alicante, 10/10/2017

IanMellor Ian Mellor

126 Landscape Park Churchtown

Dublin Dublin D14

IRELAND

Application No:	16 731 275
Your reference:
Trade mark:	Watt Power
Mark type:	Word mark
Applicant:	Ian Mellor 126 Landscape Park Churchtown Dublin Dublin D14 IRELAND

The Office raised an objection on 18/05/2017, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, because it found that the trade mark applied for was descriptive and devoid of any distinctive character in relation to all the goods for which registration was sought, for the reasons set out in the attached notice of provisional refusal.

The applicant submitted its observations on 18/07/2017, which may be summarised as follows:

1. The goods for which registration was sought in Class 9 are hereby withdrawn.

2. The mark applied for, ─ ‘Watt Power’ ─, has no associated meaning for the goods applied for in Classes 12 and 28. Therefore, the mark has no clear descriptive meaning in relation to those goods, and it is wholly capable of indicating their trade origin.

3. ‘“The applicant has been closely involved in the world of competitive cycling for many years and has noted no confusion or association of the mark in suit with any other registered or unregistered marks in the marketplace and there is nothing evident to indicate that any party would be seriously or unfairly prejudiced by registration of the mark”’.

Following the applicant's declaration of the partial withdrawal of the application, the goods specified in Class 9 were deleted from the list of goods for which registration was sought, and, accordingly, the previously raised objection on absolute grounds was withdrawn in the part related to the goods in question (the Office’s letter L176 of 06/10/2017).

As regards the remaining goods for which registration of the mark was sought, 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 and having re-considered the mark applied for in accordance with the case-law mentioned below, the Office maintains that it is not capable of functioning as a badge of commercial origin for the goods in question. Accordingly, the Office reiterates that the mark applied for conveys the obvious and direct information regarding the intended purpose of the goods claimed in Class 12, namely that they are designed and intended to be used as parts of, or with, electrically powered bicycles or electric bikes, as well as regarding the nature and characteristic of the goods applied for in Class 28, namely that they are electrically powered goods or pieces of sports equipment.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT.2, EU:C: 2004:532, § 25).

Under Article 7(1)(b) EUTMR, the registration of ‘trade marks which are devoid of any distinctive character’ is to be refused. In addition, Article 7(2) EUTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product/service in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product/service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein).

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.

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).

It is … irrelevant whether the characteristics of the goods or services 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.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102)

A word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

According to the applicant, the mark applied for has no meaning in relation to the goods applied for in Class 12. The Office strongly disagrees with this argument and, first, reiterates that the mark consists of two ordinary English words which the English-speaking consumer will understand, immediately and without any mental efforts, as referring to electrical power. Secondly, the goods for which registration is sought in Class 12 are parts of bicycles, including electric bicycles. An electric bicycle, also known as e-bike, is a bicycle with an integrated electric motor which can be used for propulsion. It consists of a modified or custom bicycle frame with pedals but includes an electric motor, usually in the form of a hub motor, mid-drive motor or belt drive to the rear wheel. They allow a rider to either pedal the bike or leverage the power of a battery and motor drive system (information extracted from https://electricbikereview.com/guides/what-is-an-electric-bike/ on 10/10/2017). As a result, the mark ‘Watt Power’ serves merely to inform potential customers of the goods in question that they are intended for electric bicycles using electric power, rather than for ordinary bicycles.

In addition, it shoul be also emphaised on this point that all the goods in question are already available in the market and described, inter alia, as follows:

(information extracted from http://www.econvergence.net/ on 10/10/2017)

(information extracted from https://www.e-bikesdirect.co.uk/electric-bikes/crank-driven/ on 10/10/2017)

(information extracted from https://www.theguardian.com/money/2017/jul/01/electric-bikes-commute-work-e-bike-budget on 10/10/2017)

(information extracted from http://inhabitat.com/tag/electric-bike-with-training-wheels/ on 10/10/2017)

Regarding the goods applied for in Class 28, namely sports equipment, it suffices to state that those goods cover electrically powered goods, such as electric bikes, including electric exercise bikes and bikes intended for racing, which are available in the market, as it can be seen, inter alia, at the following websites:

• https://www.electricbike.com/electric-bike-racing/

• https://www.tesco.com/direct/sports-leisure/exercise-bikes/cat3373799.cat?source=others ;

• https://www.bicycling.com/rides/beginners/13-things-you-need-to-know-about-e-bikes/slide/1 ;

• http://ebiketips.road.cc/content/advice/advice/are-electric-bikes-good-for-exercise-575 ;

• https://www.nycewheels.com/electric-bikes-shape-up.html .

Therefore, the relevant consumer, when encountering the mark ‘Watt Power’ in relation to the goods sports equipment, would perceive it merely as referring to pieces of sports equipment that are electrically powered. In other words, the mark at issue, when used in relation to the goods sports equipment, conveys the direct and obvious information regarding the nature and characteristic thereof, namely that they are electrically powered goods or pieces of sports equipment.

As such, it is exclusively descriptive of those goods, and, consequently, lack of any distinctive character required by Article 7(1)(b) EUTMR.

As far as the applicant’s final argument is concerned, first, it should be emphasised that, according to settled case-law

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.)

Further, registrability of a mark as a European Union trade mark does not depend on whether or not there is a trader who would be seriously or unfairly prejudiced by its registration. As already stated in the introductory part of this decision, 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 traders.

For all the reasons given above and in the notice of provisional refusal, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for a European Union trade mark No 16 731 275 is hereby refused for the following goods for which registration is sought:

Class 12 Bicycle pedals; bicycle cranks; bicycle frames; bicycle training wheels.

Class 28 Sports equipment.

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 with the Office within two months of the date of notification of this decision. 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.

Mirjana PUSKARIC