Refusal of application for a European Union trade mark

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

Alicante, 19/09/2017

BARDEHLE PAGENBERG

10, boulevard Haussmann

F-75009 Paris

FRANCIA

Application No:	016898405
Your reference:	RKD/44154
Trade mark:	BENCHMARK
Mark type:	Word mark
Applicant:	Benchmark Electronics, Inc. 3000 Technology Drive Angleton Texas 77515 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 30/06/2017 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 22/08/2017, which may be summarised as follows:

1. If the term BENCHMARK could be deemed descriptive of activities consisting in the comparison of goods and services, this term does not allude or contain a single reference to manufacturing services, engineering services or even the electronic field. There exists no risk that the relevant public could ever make an association between this term and such services.

2. Many European Union trademarks consisting of or comprising the term BENCHMARK have been registered by the EUIPO, in particular for Class 42 services.

3. Given that the sign is distinctive for the services covered in Classes 40 and 42, then the objection that the mark BENCHMARK is devoid of distinctive character for these services in unfounded.

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. If the term BENCHMARK could be deemed descriptive of activities consisting in the comparison of goods and services, this term does not allude or contain a single reference to manufacturing services, engineering services or even the electronic field. There exists no risk that the relevant public could ever make an association between this term and such services.

The Office disagrees with this argument. The definition of the word ‘Benchmark’ is:

Standard, or a set of standards, used as a point of reference for evaluating performance or level of quality. Benchmarks may be drawn from a firm's own experience, from the experience of other firms in the industry, or from legal requirements such as environmental regulations.

http://www.businessdictionary.com/definition/benchmark.html sourced on 19/09/2017.

In its assessment of the mark, the Office considers the word BENCHMARK to be defined in terms of a level of quality. The mark would not be regarded by the relevant consumer as indicating trade source but rather be seen as indicating a level of quality from the services in question. The Office does not agree that the word could not refer to manufacturing, engineering or services in the electronic field; rather the word could broadly be applied to a number of goods or services that have reached a certain standard or level of quality and are using the term to promote that. Therefore, the word would be seen as communicating a message about the services, that they set a benchmark in their level of quality.

2. Many European Union trademarks consisting of or comprising the term BENCHMARK have been registered by the EUIPO, in particular for Class 42 services.

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).

There are any number of reasons why the examples set out by the applicant may have been accepted for registration, be it differences in the services offered, limitations to the specification or the inclusion of a figurative element. However, as each case is examined on its own merits, the existence of the prior registrations cannot influence the reasoning behind the objections raised in the subject application.

3. Given that the sign is distinctive for the services covered in Classes 40 and 42, then the objection that the mark BENCHMARK is devoid of distinctive character for these services in unfounded.

Under the provisions of Article 7(1)(b) EUTMR, given that a sign has a descriptive meaning it must also devoid of distinctive character as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of its competitors. Notwithstanding the applicant’s arguments to the contrary, the mark is considered descriptive by the Office and therefore also fails under Article 7(1)(b) EUTMR.

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 016898405 is hereby rejected for all the 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.

Lance EGGLETON