Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 29/06/2018

SCHNEIDER HARING & PARTNERS TRADEMARK ATTORNEYS

Marie-Curie-Str. 8

D-79539 Lörrach

ALEMANIA

Application No:	017611104
Your reference:
Trade mark:	KOPTER
Mark type:	Word mark
Applicant:	BBI Brand Boutique International LLC Beethovenstrasse 49 CH-8002 Zürich SUIZA

The Office raised an objection on 04/01/2018 pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for a number of goods and services for which protection is sought, for the reasons set out in the attached letter.

The applicant submitted its observations on 09/05/2018, which may be summarised as follows.

1. Although “copter” might be understood by certain native English-speaking consumers as the abbreviation of “helicopter”, the “replacement” of the letter “c” with “k” makes the sign “KOPTER” distinctive.

2. The fancifulness of the sign ‘KOPTER’ was recognized by the United States Patent and Trademark Office which has allowed the registration the trade mark “KOPTER” as a US trademark.

3. The Office has allowed the registration of the trade mark ‘HELI’, another English abbreviation for the word ‘HELICOPTER’ to identify the commercial origin of, among other goods, helicopters. Therefore, the applicant requests equal treatment from the 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.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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 Office will now assess, in order, the arguments from the applicant.

1. Although “copter” might be understood by certain native English-speaking consumers as the abbreviation of “helicopter”, the “replacement” of the letter “c” with “k” makes the sign “KOPTER” distinctive.

The Office disagrees with this assessment. Since the applicant has agreed that the abbreviation “COPTER” will be regarded by English-speaking consumers as the abbreviation of “helicopter”, the Office will solely discuss the alleged distinctiveness arising from the exchange of the ‘C’ for the letter ‘K’ on the cited abbreviation.

The Office also would like to draw the applicant’s attention to the item 2.3 of the Guidelines for Examination in the Office, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks Article 7(1)(c) EUTMR, which states:

As a rule, misspellings endow the sign with a sufficient degree of distinctive character when:

• they are striking, surprising, unusual, arbitrary and/or;

• they are capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to.

Although the applicant states that the letter ‘K’ “(…) is not commonly used in the English language since English predominantly relies on the letter “c” as a substitute letter for “k””, the Office has already regarded the exchange of the aforementioned letters to be incapable to endow descriptive words with the necessary distinctiveness to secure registration. Examples of such understanding can be found on the refusal decision issued to EUTMA n.º 012667093 for the trade mark KLEAR:

“The word KLEAR is an obvious misspelling and a phonetic equivalent of the word CLEAR. It is for instance common in advertising to replace the letter “C” with a “K”. The consumers are used to this and would therefore most likely view the misspelling as an advertising gimmick”.

and the refusal decision issued to EUTMA n.º 010017705 for the trade mark KURRYKETCHUP:

“With regards to the final argument that KURRY is distinctive from the word ‘curry’, and is effectively a new word, it should be noted that it differs in only one letter from the word ‘curry’ and it does this using a letter which is phonetically identical to the original letter. The result is that the word ‘kurry’ is the phonetical equivalent of the word “CURRY”. As such it is unlikely, given the very small change implied by this change to one letter, that the consumer would see this as a distinctive term, but rather will see this term as descriptive of the goods for which the mark has been applied”.

The same standard was also applied with regard to the Spanish language in the decision of 26 June 2015 – R 821/2015-4 – Kabrita (figurative mark).

Therefore, the Office finds that the misspelling concerned is not striking or surprising, nor does it give rise to a new, different word. The resulting word ‘KOPTER’ is phonetically equivalent to the ‘COPTER’, and relevant consumers will regard it as having the same meaning as the correctly spelled word.

Consequently, the Office dismisses the argument concerned.

2. The fancifulness of the sign ‘KOPTER’ was recognized by the United States Patent and Trademark Office which has allowed the registration the trade mark “KOPTER” as a US trademark.

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).

In that sense, the Office finds that the possible acceptance for registration of the trade mark in question by the USPTO has no impact on the decision at hand. It does not disqualify the objection raised or indicates any fault in its reasoning.

Therefore, the Office cannot find merit in this argument.

3. The Office has allowed the registration of the trade mark ‘HELI’, another English abbreviation for the word ‘HELICOPTER’ to identify the commercial origin of, among other goods, helicopters. Therefore, the applicant requests equal treatment from the Office.

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).

Aside from that, it has not been proven by the applicant that the word HELI is an accepted abbreviation of the word HELICOPTER. Common English dictionaries such as Oxford Dictionaries and Collins Dictionaries recognize such word as a prefix, which indicates one’s relation to that vehicle, but not as an abbreviation or a formal way of referring to them.

Moreover, the Office believes that the scope of protection of the cited mark – EUTM n.º 010613801 – was misinterpreted by the applicant.

The translated list of the protected goods in class 12 for the mark cited reads as follows: Vehicle accessories for attachment to the exterior of vehicles, in particular freight carriers, trailers, vehicle superstructures, freight containers, base or ground carriers, coupling carriers, load carriers, roof racks, rear-mounted carriers for fitting onto trailer couplings or for fitting freely to the rear of the vehicle, convertible base carriers, roof luggage racks, bungee cords, roof boxes, platforms for automobiles, carriers for fastening into the interior space of vehicles, drawbar carriers for fitting onto a caravan drawbar and/or trailer drawbar, and mounts and securing devices for the transport of the aforesaid carriers on a vehicle; Mounts and securing devices for adapting the aforesaid carriers to goods to be transported, in particular mounts for bicycles, motorcycles, skis, surfboards, boats, transport containers, cargo baskets, tubs, tyres; Shopping trolleys or Wheelbarrows; Carrier systems for holding, storing and transporting children, In particular prams; Parts for carriers for use on vehicles; luggage nets, guard nets and nets for dividing spaces; All goods included in class 12.

The applicant’s claim is based on the fact that the last description would imply that all goods that are listed under class 12 are protected under the aforementioned register, and, consequently, this would include helicopters. However, the issue of specifications without clarity or precision has been dealt with on the decision issued on June 19, 2012, CJEU judgment in IP TRANSLATOR (C-307/10 – Chartered Institute of Patent Attorneys), where the Court said that all terms used in specifications had to be clear and precise, and that, while general indications from class headings were in principle permissible, they covered only goods or services covered by their literal meaning.

Consequently, the referred description could not proclaim that all goods that belong class 12 are protected.

Therefore, the argument provided by the applicant has to be dismissed.

In closing, the Office maintains that the sign applied for, KOPTER, will be regarded by the relevant English-speaking consumer as descriptive of the goods and services for which protection is sought, namely, that they would all relate to helicopters. The word ‘KOPTER’ is an easily perceived misspelling of the word ‘COPTER’, which, in turn, is a known abbreviation of the word ‘HELICOPTER’. The aforementioned misspelling does not lead to an aural impression which diverges significantly from the word in its correct form. The exchange of the letter ‘C’ by the letter ‘K’ at the start of the said expression does not bring about any change in its pronunciation or meaning. Furthermore, it is recognized in case law that such practices as playing with the spelling of a word, grammar and syntax of a sentence, or adopting unorthodox punctuation are common in trade, particularly with regard to promotional activities. Consequently, the consumer, despite the use of a misspelling, will be well aware of the real meaning of the word at issue, and will not give it any significance beyond the said promotional role.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 611 104 is hereby rejected. For the following goods and services:

Class 12	Vehicles; Apparatus for locomotion by air.
Class 28	Toys, games, playthings and novelties; Toy models; Scale model kits [toys].
Class 37	Repair, servicing and maintenance of vehicles and apparatus for locomotion by air.
Class 41	Education; Providing of training; Sporting activities.

The application may proceed for the remaining goods.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Christiano DOS SANTOS TIMBO