Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 12/12/2017

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

REINO UNIDO

Application No:	017215112
Your reference:	GRI3J/T79794EM
Trade mark:	VOLTAGE PERFORMANCE CONTRACT
Mark type:	Word mark
Applicant:	EMSC Asia Pacific Pty Ltd 205/17-33 Milton Rd Malvern Victoria 3144 AUSTRALIA

The Office raised an objection on 25/09/2017 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 13/10/2017, which may be summarised as follows:

1. The sign applied for does not describe the services directly. There is no sufficiently direct and specific relationship between the mark and the services in question.

2. The objection under Article 7(1)(b) EUTMR relies on the objection under Article 7(1)(c) EUTMR. As the objection under Article 7(1)(c) EUTMR has been made in error and should be removed, the objection under Article 7(1)(b) EUTMR should also be waived.

3. The Office has not provided examples of third parties using the sign ‘VOLTAGE PERFORMANCE CONTRACT’.

4. The applicant’s sign has been deemed to be inherently distinctive in the UK and Australia.

5. The Office has previously registered several trade marks that are similar to the sign ‘VOLTAGE PERFORMANCE CONTRACT’.

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.

1. The sign applied for does not describe the services directly. There is no sufficiently direct and specific relationship between the mark and the services in question.

The sign ‘VOLTAGE PERFORMANCE CONTRACT’, because it refers to the services for which registration is sought, is directly descriptive. The mark as a whole would immediately inform consumers without further reflection that the services for which registration is sought are various kinds of electricity services provided through a contract; therefore, the relevant consumer would perceive the sign as providing information about the type of services in question.

It follows that the link between the words in the mark and the services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR.

There is no need for consumers to make an additional mental step to understand the connection between the mark and the services for which registration is sought. Therefore, the Office cannot agree with the applicant that there is no obvious or direct link between the trade mark and the services to which an objection has been raised and for which registration is sought.

2. The objection under Article 7(1)(b) EUTMR relies on the objection under Article 7(1)(c) EUTMR. As the objection under Article 7(1)(c) EUTMR has been made in error and should be removed, the objection under Article 7(1)(b) EUTMR should also be waived.

The Office agrees with the applicant in that, if the objection under Article 7(1)(c) EUTMR is waived, there would be no reason for the objection under Article 7(1)(b) EUTMR. However, in the present case the Office has not decided to waive the objection under Article 7(1)(c) EUTMR and, therefore, finds this argument to be irrelevant.

3. The Office has not provided examples of third parties using the sign ‘VOLTAGE PERFORMANCE CONTRACT’.

As regards the argument that it is up to the Office to show that other similar signs are used in the market, the Court has confirmed that: where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience. (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

4. The applicant’s sign has been deemed to be inherently distinctive in the UK and Australia.

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).

5. The Office has previously registered several trade marks that are similar to the sign ‘VOLTAGE PERFORMANCE CONTRACT’.

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).

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 17 215 112 is hereby rejected for all the services 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.

Liina PUU