Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/05/2018

BIRCHAM DYSON BELL LLP

50 Broadway

London Westminster SW1H 0BL

REINO UNIDO

Application No:	017542804
Your reference:	145152.0006
Trade mark:	MICRO-PAK
Mark type:	Figurative mark
Applicant:	Micro-Pak Limited Suite 2504, Tower 6, The Gateway, Harbour City, 9 Canton Road, Tsim Sha Tsui, Kowloon Kowloon REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 14/12/2017 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 02/02/2018, which may be summarised as follows.

1. There is no direct connection between the goods and the trade mark in question, and it would therefore be highly unlikely that the relevant public would be capable of establishing a link between the trade mark and goods in Classes 1 and 5.

2. The relevant public may not have a high degree of attention, especially not in regard to some goods in Class 5, as these are goods that most supermarkets in any EU Member State would sell.

3. The application is based on the trade mark ‘MICRO-PAK’, which is already registered in the UK. Trade mark law in European Union is harmonised. The Office should follow the UK Office practice and register the applicant’s trade mark.

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.

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).

In the present case, the sign applied for immediately informs consumers, without further reflection, that the services for which registration is sought are social networking services and the provision of internet networking websites and various types of virtual facilities to be used in connection with or for such services, internet forums and online chatrooms. Therefore, the relevant consumers would perceive the sign as providing information about the kind, quality and intended purpose of the services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, 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.

The Office replies to each of the applicant’s observations as follows:

1. There is no direct connection between the goods and the trade mark in question, and it would therefore be highly unlikely that the relevant public would be capable of establishing a link between the trade mark and goods in Classes 1 and 5.

The sign ‘MICRO-PAK’, because it refers to the goods for which registration is sought, is directly descriptive. The mark as a whole would immediately inform consumers without further reflection that the goods are either very small packages or goods packaged in very small units; therefore, the relevant consumer would perceive the sign as providing information about the kind and size of the goods 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 relevant public may not have a high degree of attention, especially not in regard to some goods in Class 5, as these are goods that most supermarkets in any EU Member State would sell.

The Office agrees with the applicant that the degree of attention of the relevant public may not be high in regard to some goods in Class 5.

However, the sign is directly descriptive of the goods for which protection is sought. The mark ‘MICRO-PAK’ as a whole would immediately inform consumers without further reflection that the goods are small packages or goods packaged in small units. The Office considers that an average or low degree of attention alone does not establish that the consumer will recognise an indication of origin when encountering such a clearly descriptive and non-distinctive sign. Consumers do not tend to carry out complex analyses and will perceive the sign as merely descriptive, indicating a positive characteristic of the services for which protection is sought. Moreover, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the function of a trade mark, even if the awareness of the relevant public is higher than average.

Consequently, the Office finds that the applicant, which argues that the consumer makes the difference between a trade mark and a descriptive sign, cannot rely on the mere fact that the consumer may not have a high degree of attention.

3. The application is based on the trade mark ‘MICRO-PAK’, which is already registered in the UK. Trade mark law in Europe is harmonised. The Office should follow the UK Office practice and register the applicant’s trade mark.

The Office considers that, even though trade mark law has been harmonised in the European Union, this does not prevent the possibility of different outcomes of trade mark examinations in different IP offices. The Office is obliged to take into account its own trade mark registration practice and make the registration decision on the basis of those facts and circumstances. While the Office takes note of national registrations, there will always be occasions when it has to differ from a line taken by a national office.

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).

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 17 542 804 is hereby rejected for the following goods:

Class 1 Fungicides (Chemical additives to -); Chemical additives to fungicides;

Additives, chemical, to fungicides; Auxiliary fluids for use with additives for fungicides; Inert gases, other than for medical use; Chemical products for preserving products during storage; Mold inhibiting chemicals for preventing growth of mold; Foundry molding [moulding] preparations.

Class 5 Fungicides; Biological fungicides; Fungicides for killing vermin; Fungicides for domestic use; Fungicidal preparations; Bacterial poisons; Chemical preparations for pesticidal purposes; Chemical preparations for treating mildew; Pharmaceutical preparations; Antibacterial pharmaceuticals; Veterinary preparations; Pharmaceutical preparations for veterinary use; Sanitary preparations for medical purposes; Plasters; Materials for dressings; Material for stopping teeth; Dental wax; Disinfectants; Preparations for destroying vermin; Herbicides.

EN-16 Packaging materials.

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