Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 24/07/2020

OAKLEIGH IP SERVICES LIMITED

7 Paynes Park,

Hitchin, Hertfordshire SG5 1EH

REINO UNIDO

Application No:	018028623
Your reference:	MERZ85114
Trade mark:	RAIL
Mark type:	Word mark
Applicant:	Trek Bicycle Corporation 801 West Madison Street, Waterloo, Wisconsin 53594 UNITED STATES (OF AMERICA)

The Office raised objections on 30/05/2019 and 21/01/2020 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 letters.

The applicant submitted its observations on 30/09/2019 and 23/03/2020, which may be summarised as follows.

1. The word ‘rail’ is in no way the same as ‘parking rack’. The sample definition cited by the Office makes no reference to bicycles, bicycle frames and bicycle structural parts therefor or, indeed, to parking racks.

2. The most common and likely meaning of the word ‘rail’ to be perceived by an English-speaking consumer is that of transportation services by train (locomotives).

3. The word mark ‘Rail’ has been registered for the same goods by USPTO (registration No 3 050 207).

4. The goods referred to in the objection of 21/01/2020 are pedal-powered machines typically attached to, and for use on, defunct rail tracks that are clear of rail traffic. Such machines and/or apparatus are not covered by the sign for which registration is sought. These products are not bicycles and could not be used as bicycles or mountain bikes, as they are reliant on the tracks to which they are attached. The goods for which protection is sought are bicycles, and in particular mountain bikes – otherwise known as trail bikes – having the added feature of being electric, not rail bikes or machines for transportation along the rail tracks to which they are affixed, as alleged.

5. The applicant, Trek Bicycle Corporation, is well known in the field of bicycles. Since its establishment in July 1976, its popularity and reputation have grown year after year, achieving an enviable global presence. Its revenue in 2013, nearly forty years after its formation, was estimated at USD 900 million which, even when converted to an equivalent figure in euro, shows considerable goodwill and reputation. Trek sells bicycles. Trek bikes are marketed through 1 700 independently owned bicycle shops across North America, and subsidiaries in Europe, Asia, South Africa, as well as distributors in 90 countries worldwide. Most Trek bicycles are manufactured outside the United States, in countries including China, Germany, the Netherlands, Taiwan. It is not unfair to state that Trek is, therefore, known for their bicycles in the EU.

6. ‘RAIL’ is TREK’s range of electric mountain bikes or electric trail bikes.

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.

Descriptiveness — Article 7(1)(c) EUTMR

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).

The Office concurs with the applicant that the word ‘rail’, with the meaning provided in the objection letter of 30/09/2019¹, neither means nor will be associated with ‘a parking rack’. The mere fact that bikes can be locked to a rail does not mean that the word ‘rail’, with its respective meaning, describes a characteristic of the goods in question. Therefore, there is no direct and specific link between the word ‘rail’ (with this meaning) and the goods in question.

However, the Office maintains the view that the word ‘rail’ with the meaning provided in the objection letter of 21/01/2020² describes certain characteristics of the goods in question. As can be seen from the articles provided in the said objection letter, the term ‘rail bike’ is an established term for pedal-powered machines which are ridden along railroads that have no train traffic. The relevant consumers would perceive the sign as providing information that the bicycles are rail bikes and the bicycle frames and bicycle structural parts are intended for rail bikes. Therefore, the sign describes the kind and intended purpose of the goods in question.

The applicant’s argument that the goods referred to in the articles are not bikes but some other type of machines and/or apparatus that move on rails is not convincing. The articles provided in the objection letter of 21/01/2020 explicitly refer to ‘rail bikes’ and the activity of riding these bikes is ‘rail biking’. It is irrelevant that these vehicles do not present the typical features of an ordinary bicycle – namely that they are larger in size, have more wheels, can accommodate more people and move on rails. As can be seen from the articles, ‘rail bikes’ and ‘rail biking’ are established terms. The applicant has applied for protection for, inter alia, bicycles, which is a broad category and may include different types of bicycles, including the ones referred to in the articles. The fact that the applicant offers electric mountain bikes and electric trail bikes under the sign for which registration is sought is irrelevant, because this is not included in the specification of the goods for which protection is sought.

As to the history of the applicant’s company and its alleged popularity and success in the United States and Europe, it has to be noted that the applicant has not made a claim of acquired distinctiveness through use according to Article 7(3) EUTMR. These arguments, referring mostly to the applicant’s company and not to the sign for which registration is sought, cannot be taken into consideration when assessing the inherent distinctiveness of the sign. Furthermore, consumers are not expected to know about the applicant’s business. Consequently, these circumstances and the details provided by the applicant in this regard are of no importance when analysing what would be the prima facie impression of the public when perceiving the sign for which registration is sought.

As regards the national decision referred to by the applicant, namely the registration by the USPTO, 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 18 028 623 is hereby rejected for all the goods 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.

Ivo TSENKOV