Partial refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/11/2018

Stork Bamberger Patentanwälte PartmbB

Meiendorfer Str. 89

D-22145 Hamburg

ALEMANIA

Application No:	017918110
Your reference:	17902-EM
Trade mark:	FOOD PROCESSING INNOVATION
Mark type:	Figurative mark
Applicant:	Baader Poultry Holding GmbH Geniner Straße 249 D-23560 Lübeck ALEMANIA

The Office raised an objection on 10/07/2018 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 10/09/2018, which may be summarised as follows:

1. The Notice focuses on the word elements ‘FOOD PROCESSING INNOVATION’ of the sign, rather than considering the sign as a whole. The sign as a whole possesses sufficient distinctive character including the device element and the stylisation of the words; including the device element consisting of four parallelograms in the beginning, the word elements being written in two lines, both device and word elements with the same vertical size, the sign is not dominated by either part of the mark (device/words), they rather form one unit since both parts share also the same colour and the same angle of inclination.

2. Registered European Union trade marks; registrability of the device and word/device.

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)(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).

1. The Notice focuses on the word elements ‘FOOD PROCESSING INNOVATION’ of the sign, rather than considering the sign as a whole. The sign as a whole possesses sufficient distinctive character including the device element and the stylisation of the words; including the device element consisting of four parallelograms in the beginning, the word elements being written in two lines, both device and word elements with the same vertical size, the sign is not dominated by either part of the mark (device/words), they rather form one unit since both parts share also the same colour and the same angle of inclination.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

Terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b), (c) or (d) EUTMR if combined with other elements that make the sign as a whole distinctive. In other words, refusals based on Article 7(1)(b), (c) and/or (d) EUTMR may not apply to signs consisting of a nondistinctive, descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness.

The presence of figurative elements may give distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render it eligible for registration as a EUTM. Therefore, the question to be considered is whether the stylisation and/or the graphical features of a sign are sufficiently distinctive for the sign to act as a badge of origin. In practice this means that one of the main questions that the Office must answer is whether the mark is figurative enough to reach the minimum degree of distinctive character that is required for registration.

Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the abovementioned shapes are used as a frame or border.

In the present case, the Office considers that the figurative and stylised elements of the mark are not sufficient to distract the relevant English consumer’s attention to the overall meaning of the mark, which is the innovative food processing in the objected goods and services claimed. In effect, there is no element of sufficient impact but only the four simple vertical rectangles in front, the two lines of words, and all the elements with same vertical size in blue colour and leaning to the right with the same inclination. These elements do not render the mark distinctive in relation to the goods and services objected. The message is obvious and would be very clear in the mind of the relevant English consumer: the sign relates to any state of the art or advanced food processing, therefore, it reflects certain characteristics of the goods and services objected, such as the kind, quality and intended purpose.

Therefore, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character and is not capable of distinguishing the goods and services to which an objection has been raised.

2. Registered European Union trade marks; registrability of the device and word/device.

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).

Concerning the registered EU trade marks presented by the applicant, the Office would like to mention that the set of trade marks composed of a figurative element only are obviously not comparable to the one applied for by the applicant, for it is composed of both figurative and word elements.

As regards the marks combining a figurative and a word element, EUTM 011609658 ‘WINE & VINEYARDS PROPERTIES’, EUTM 016182561 ‘DATACENTER.COM’ and ‘Cash&Drive’, every trade mark goes through a thorough examination procedure and has its own consideration. The examiner considered that they comply with the requirements to be in the Register; however, every trade mark can be challenged upon request through cancellation proceedings.

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 17 918 110, , is hereby rejected for the following goods and services:

Class 7 Filling machines; separators; fleshing machines; belt conveyors; loading machines; packing machines; meat choppers; belts for conveyors; conveyors (machines); moulding machines; bottle filling machines; blades and knives (parts of machines); bearings (parts of machines); pressing/separating machines; sorting machines for industry; transport belts; drums (parts of machines); machines for the food processing industry; fish and food processing machines and parts thereof, as far as contained in this class; machines for treating and processing of fish, meat and poultry as well as fruit and vegetables and products made therefrom; automatic conveyors for loading machines with goods and articles for further processing; machines for producing or treating of packaging and packaging containers, including those made of foil; machines for sealing containers, including those made of foil, as well as pouch packages; machines and apparatus for labelling packaging of goods; parts of the aforementioned machines and apparatus, as far as contained in this class; suction machines for industrial purposes; grain separators; incubators for eggs; brushes (parts of machines); compressed air engines; pressure regulators (parts of machines); pressure valves (parts of machines); packaging machines; ejectors; labellers (machines); springs (parts of machines); filtering machines; crankcases for machines, motors and engines; hangers (parts of machines); taps (parts of machines, engines or motors); cowlings (parts of machines); elevating apparatus; lifting apparatus; universal joints (Cardan joints); ball bearings; automatic handling machines (manipulators); housings (parts of machines); knives (electric); blade holders (parts of machines); blade sharpening (stropping) machines; feeders (parts of machines); mixers (machines); pneumatic tube conveyors; presses for fruit; presses (machines for industrial purposes); belts for machines; robots (machines); roller bearings; grindstones (parts of machines); grease boxes (parts of machines); lubricating pumps; lubricators (parts of machines); self-oiling bearings; sieves (machines or parts of machines); control mechanisms for machines, engines or motors; stuffing boxes (parts of machines); shock absorber plungers (parts of machines); dividing machines; transmissions for machines; vacuum pumps (machines); heat exchangers (parts of machines); shaft couplings (machines); tools (parts of machines); holding devices for machine tools; sausage machines; centrifugal machines; slaughtering machines; machines and apparatus for automatic transport of articles; machines and apparatus for automatic transport of animals; machines for cleaning of fish, meat, poultry as well as fruit and vegetables; machines for fumigating animals; machines for loading/unloading of animals and animal cages; machines for dosing solid or deformable food; machines for homogenizing foodstuffs.

Class 9 Dosage dispensers; electric sensors; optical sensors; infrared sensors; microwave sensors (measuring devices); quantity indicators; measuring devices; weighing apparatus and instruments; weighing machines; temperature indicators; thermometers (not for medical purposes); counters; counting mechanisms; apparatus for dosing solid or deformable food.

Class 41 Training; arranging and conducting of workshops and seminars.

The application may proceed for the remaining goods.

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.

Jesús ROMERO FERNÁNDEZ