Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 24/05/2018

BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT MBB - PATENTANWÄLTE RECHTSANWÄLTE

Postfach 10 71 27

D-28071 Bremen

GERMANY

Application No:	17 565 706
Your reference:	S13402EU
Trade mark:	BINDERLESS
Mark type:	Word mark
Applicant:	SUMITOMO ELECTRIC INDUSTRIES, LTD 5-33 Kitahama 4-chome Chuo-ku, Osaka-shi Osaka 541-0041 JAPAN

The Office raised an objection on 22/12/2017, 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 16/02/2018, which may be summarised as follows:

1. The goods for which registration is sought are not “‘cutting tools”’, or, at least, not only / not particularly “‘cutting tools”’. This applies to metalworking machines; construction machine. It is case -law that a (alleged) description of a single part or component is not necessarily a description of the end product as a whole. Only if a feature of the part could have a significant effect on the essential characteristic of all the goods in the perception of the relevant public may, a description of the single part also be a description of the end product. These machines have many possible functions and purposes constituting the general function “‘metalworking”’ or “‘constructing”’.

2. It is also settled case -law that an examination of the absolute ground for refusal must be carried out in relation to each of the goods and services for which registration is sought. In the present case, the Office did not apply this rule.

3. As regards the remaining goods to which the objection was raised, the mark is not descriptive; the word ‘binder’ means, inter alia, ‘a substance used to make other substances or materials stick or mix together, and the word ‘less’ means ‘a smaller amount of; not as much’. As a result, the combination of these words, ‘BINDERLESS’, has no direct descriptive connotation in relation to the goods in question.

4. The average consumer perceives the mark as a whole, and does not proceed to analyse its constituents. In the mark ‘BINDERLESS’ there is no space between the words, and, furthermore, ‘less’ is comparable to ‘little’ having an individual meaning itself. Therefore, the relevant public will perceive the mark as one – fanciful – word.

5. The Office has already registered marks consisting of, or containing, the word ‘binder’ (EUTMs No 9 879 933 and No 9 824 277). If the Office considers the word ‘binder’ distinctive, the same consideration must, therefore, apply to the word ‘binderless’.

6. Trade marks consisting of the word ‘binder’ have also been registered by the German Trademark Office.

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.

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).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR

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.)

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).

After giving due consideration to the applicant’s arguments and having re-considered the mark applied for in accordance with the case -law mentioned above, the Office maintains that it is not capable of functioning as a badge of commercial origin for the goods to which the objection was raised. The Office reiterates that the relevant public would perceive the mark as merely providing information about the characteristic and intended purpose of the goods in question, namely that they do not contain binder materials, or that they are goods intended to be used for, or with, such goods.

Regarding the applicant’s first argument, it is indisputable that metalworking machines; construction machine have many possible functions. However, it is also unquestionable that these goods can contain a single part or component used as a cutting tool, as the applicant itself declares. In this regard, the Office emphasises that, according to settled case –law:

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)

Moreover, the Office considers that binderless cutting tools / materials are a commercially essential characteristic of metalworking machines, regardless of the fact that the tool might be only one of their components taking into account, inter alia, that a cutting tool is one of the most critical elements in metal cutting, as well as all the benefits of using such binder-less cutting tools / materials, as described, inter alia, at the following websites:

• https://link.springer.com/article/10.1007%2Fs12541-010-0040-1 ; http://opac.vimaru.edu.vn/edata/E-Journal/2005/International%20Journal%20of%20machine%20tools%20and%20manufacture/issue1/bai11.pdf/ ;

• http://global-sei.com/technology/tr/bn74/pdf/74-03.pdf ;

• https://link.springer.com/article/10.1007%2Fs00170-017-1226-9 ;

• http://global-sei.com/technology/tr/bn74/pdf/74-03.pdf .

In response to the applicant’s second argument, it suffices to state that, according to settled case- law, where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 37). In the present case, the Office finds that the same reasoning applies to all the goods to which an objection has been raised.

As regards the applicant’s third argument, the Office agrees that both words composing the marks have multiple meanings, including those referred to by the applicant. However, it is well-established that the distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought (rather than independently of them), and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29). It is also settled case -law that a mark must be refused registration if at least one possible meaning designates a characteristic of the goods and services concerned.

Concerning the applicant’s fourth argument relating to consumers perception of the mark, the Office considers that the relevant public would perceive the mark as merely consisting of two words, ‘binder’ and ‘less’, which are simply joined together. In other words, the Office does not consider the lack of space between the words in question sufficient to result in the mark being perceived as fanciful, a novel combination or a lexical invention.

In its fifth argument, the applicant points out that the Office has already registered marks containing he word ‘binder’ and refers specifically to the trade marks ‘binder’ (EUTM No 98 799 933, 08/04/2011) and ‘EasyBinder’ (EUTM No 9 824 277, 23/01/2011).

The Office does not find any of the registrations cited persuasive, for the reasons briefly indicated below:

It is settled case-law that ‘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; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

In addition, it is also well established that descriptiveness and non-distinctiveness under Article 7(1)(b) and (c) EUTMR must be assessed in the light of the circumstances of each case. In this regard, the Office emphasises that none of the trade marks referred to by the applicant is identical to the mark at issue or registered for goods that are identical or even similar to the goods for which registration of the mark ‘BINDERLESS’ is sought. Accordingly, none of these trade marks can be considered decisive or even relevant for the assessment of whether or not the mark at issue is distinctive.

Furthermore, a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole (15/09/2005, T‑320/03, Live richly, EU:T:2005:325 § 81; 09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32; 20/11/2002, T‑79/01 & T‑86/01, Kit Pro / Kit Super Pro, EU:T:2002:279, § 22). Accordingly, previously registered trade marks that contain, inter alia, a part of the mark applied for, namely the word ‘binder’ cannot be considered relevant.

As far as the applicant’s final argument is concerned, it suffices to state that, according to settled case:

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 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 European Union trade mark No 17 565 706, ‘BINDERLESS’, is hereby refused for all the goods for which registration is sought, as amended by the Office letter L161 of 03/01/2018, to read:

Class 7 Metalworking machines; cutting tools [for machinery]; power drill bits; electrical drills; tool bits for metalworking machines; tool bits for construction machines and apparatus; cutting inserts [parts of machines]; milling cutters [machine tools]; end mills [machines]; reamers being machine tools; dies for use with machine tools; grinding tools [parts of machines]; power-operated saws for metalworking; saw machines for metalworking; saw benches being parts of machines; blades for power saws for metalworking; cemented carbide machine tools; cemented carbide cutting tools; cemented carbide tips for use with machine tools; diamond-pointed metal-cutting tools; diamond saws; drill chucks [parts of machines]; drills for the mining industry; mining bits; construction machines.

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 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