Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 27/11/2017

FRKELLY

27 Clyde Road Ballsbridge

Dublin 4

IRLANDA

Application No:	016731408
Your reference:	TM103319EU00/MCB
Trade mark:	THE FLEX BELT
Mark type:	Word mark
Applicant:	Bio-Medical Research Limited BMR House, Parkmore Business Park West Galway, Co.Galway IRLANDA

The Office raised an objection on 30/06/2017 pursuant to Article 7(1)(b) and (c) 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 14/07/2017, which may be summarised as follows.

1. The goods target the general public rather than the professional public as suggested by the Office.

2. The flexibility of the product is not a characteristic of the goods because the goods are not flexible.

3. Such a combination is not used in normal language and the connection between the mark and the goods is artificial and abstract.

Pursuant to Article 94 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 goods target the general public rather than the professional public

The applicant holds that the goods in the case at hand target the general public and not the professional public as suggested by the Office. The Office takes due cognisance of the arguments of the applicant and observes that the goods applied for target both the general public and the professional public. In this respect the Office notes that the goods in class 10 can target both the professional public and the general public. Goods such as Medical apparatus and instruments usually target professional public, however other goods such as electrical apparatus and instruments used as aids to slimming, massaging, muscle toning and beauty care target the general public. Moreover, the goods in class 25 target the public in general.

However, despite the potential differences between the different public targeted, the Office still believes that the mark lacks distinctiveness and is descriptive of the goods applied for. Irrespective of the public concerned, the Office still believes that the relevant consumer will perceive the mark in a descriptive and non-distinctive manner. The meaning of the word ‘belt’ is clear to any English speaker in the EU, the same can be said of the word ‘flexi’. This is a common abbreviation of the word ‘flexible’, this is not just an assumption based on dictionaries; it has been confirmed time and time again by the Courts.¹

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Therefore, even if one had to take into account that for, at least part of the goods, the relevant public is considered to be the professional public, the mark is still considered to be descriptive and non-distinctive.

The flexibility of the product is not a characteristic of the goods

The applicant holds that in normal usage abdominal toning belts are not referred to ‘Flex Belts”.

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).

Therefore the mere fact that the goods applied for do not contain belts which are not flexible is rather irrelevant because this does not confer distinctiveness on the mark. The mark applied for is descriptive of the goods applied for, because consumers will perceive the mark as a flexible belt, and thus the goods applied for are either flexible belts or contain flexible belts.

Such a combination is not used in normal language

The applicant holds that the combination ‘FLEX BELT’ is not used in normal language. This fact alone does not mean that the mark is distinctive. The meaning of the mark is clear and unequivocal. Any English speaking consumer in the EU will understand the mark applied for as a clear indication that the goods are or have a belt which is flexible.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 731 408 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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