Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 08/10/2019

DLA PIPER FRANCE LLP

IP & T department 27 rue Laffitte

F-75009 Paris

FRANCIA

Application No:	018039022
Your reference:	IPT/TM/CL/FLEXFIT
Trade mark:	FLEXFIT
Mark type:	Word mark
Applicant:	D'Addario & Company, Inc. 595 Smith Street Farmingdale, NY 11735 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 12/04/2019 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 07/06/2019, which may be summarised as follows.

• The applicant submits that the Collins English Dictionary provides more than 6 definitions for the word “flex” and more than 17 definitions for the word “fit” and concludes that the public will not perceive the trademark application as having a specific meaning with respect to the goods claimed

• The word “FLEXFIT” is a neologism and is not defined in any dictionary

• The applicant highlights that each of the grounds for refusal to register listed in Article 7(1) of the regulation is independent of the others and requires separated examination (ECJ, 8 May 2008, C-304/06, EUROHypo, § 54)

• The trademark application “FLEXFIT” will be perceived without any doubt as a trademark enabling the public to identify the origin of the goods for which registration is sought within the meaning of Article 7(1)(b)

• The wording “FLEXFIT” is unusual

• The Applicant draws the attention on other “Flexfit” trademarks and on trademarkds composed of the term “flex” which have been registered by 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)(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).

As regards the applicant’s first line of argument that the Collins English Dictionary provides more than 6 definitions for the word “flex” and more than 17 for the word “fit”, the Office recalls that 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, emphasis added.)

As regards the applicant’s next line of argument that the word “FLEXFIT” is a neologism and that is not defined in any dictionary, the Office submits that a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T 173/03, Nurseryroom, EU:T:2004:347, § 21).

Therefore, as already noted in our previous notification of 12/04/2019, the Office is convinced that the relevant English speaking consumers would perceive the sign as providing information that the capos for guitars and fretted musical instruments applied for in Class 15 are able and/or have the characteristics to be bent in order to fit better on these musical instruments.

The Office does not dispute that each of the grounds for refusal to register listed in Article 7(1) of the regulation is independent of the others and requires separate examination. The Office highlights that a sign having a clear descriptive meaning, is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is not capable of fulfilling the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

The Office has thoroughly demonstrated in this communication and in the notification of 12/04/2019 that the sign has a strong descriptive meaning and lacks therefore of any distinctive character pursuant Article 7(1)(c) and (b) EUTMR.

The Office respectfully does not agree with the applicant’s argument that the mark “FLEXFIT” will be perceived without any doubt as a trademark enabling the public to identify the origin of the goods for which registration is sought, as noted above. Moreover, it must be recalled that the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T 129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the [applicant][holder] claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

Moreover, the Office highlights that the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

Finally, 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).

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 018039022 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.

Soledad PALACIO MONTILLA