Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/09/2020

HGF LIMITED

8th Floor,

140 London Wall

London EC2Y 5DN

REINO UNIDO

Application No:	018226311
Your reference:	T300257EP/JMT/JMA
Trade mark:	PINPOINT
Mark type:	Word mark
Applicant:	Powell Electrical Systems, Inc. 8550 Mosley Houston Texas 77075 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 25/04/2020 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 letter.

The applicant, after requesting an extension of the time limit on 18/06/2020, submitted its observations on 17/08/2020, which may be summarised as follows.

1. The examiner erred in assessing the descriptiveness of the sign with respect to the goods actually claimed. The true function of the goods for which protection has been sought, i.e. predictive maintenance monitoring device for continuous monitoring for partial discharge within electrical switchgear or bus duct is to monitor partial discharge within a medium voltage switchgear or bus duct and to alert the user once a fault has been detected. Protection is not sought for the goods which identify the precise location or cause of partial discharge and which could be described by the word ‘PINPOINT’. Since the protection is not sought for precise identification of a partial discharge, but rather for a monitoring and alert of a partial discharge, it is not correct to conclude that the mark applied for is descriptive.

2. Since the mark is not descriptive, it cannot be considered as lacking distinctive character.

3. The Office has already accepted similar marks for registration, some of which also have a monitoring function.

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.

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).

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).

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered. The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65

The absolute grounds for refusal for a lack of distinctive character and the characteristics of descriptive and common indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is sufficient, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) should apply notwithstanding that the grounds preventing registration obtain in only part of the European Union.

1. The applicant claims that the true function of the goods for which protection has been sought is to monitor partial discharge within a medium voltage switchgear or bus duct and to alert the user once a fault has been detected. Protection is not sought for the goods which identify the precise location or cause of partial discharge and which could be described by the word ‘PINPOINT’.

Regarding this argument of the applicant, first, it is noted that the goods applied for are predictive maintenance monitoring device for continuous monitoring for partial discharge within electrical switchgear or bus duct. The term ‘PINPOINT’ applied for, as shown in the objection letter of 25/04/2020, means ‘to locate or identify exactly’, including locating and identifying problems (partial discharge) in order to keep track of it. The Office does not dispute that the words ‘monitor’ and ‘pinpoint’ are not synonymous and have different meanings. However, it is also true that in order for the partial discharge to be monitored it has to be located and identified. Accordingly, it is determined by the Office that predictive maintenance monitoring device for continuous monitoring for partial discharge within electrical switchgear or bus duct includes in these processes the location and exact identification of such problems. In this respect it is also stressed that even though the process of monitoring may be long lasting and constant, the location and identification of assets is always part and a purpose of it.

Therefore, the Office confirms its findings presented in the 25/04/2020, namely that the relevant consumers would perceive the sign as providing information that the goods applied for are predictive maintenance continuous monitoring devices which locate, identify and fix with precision partial discharge which might occur within electrical switchgear or bus duct. Locating and identifying partial discharge is very important, because it ‘can occur on the surface of insulators or within voids, gaps and similar defects in medium voltage switchgear. If allowed to continue, partial discharge will erode the insulation, resulting in tracking or a treeshaped pattern of deterioration (electrical tree) and eventually result in complete breakdown and failure of the switchgear. Such failures cause unplanned power outages, loss of plant production, equipment damage, and/or personnel injury. Data obtained through Partial Discharge testing and monitoring can provide critical information regarding the quality of insulation and its impact on system health. By detecting and trending partial discharge, it is possible to observe its development over time in order to assist asset managers with strategic decisions regarding the repair or replacement of the asset’. Thus, predictive maintenance monitoring device for continuous monitoring for partial discharge within electrical switchgear or bus duct which pinpoints such problems helps to eliminate unplanned outages and lost profit as a result of system downtime¹.

In addition, the Boards of Appeal of the EUIPO have already concluded, that the expression ‘PINPOINT’ can refer to the monitoring of the performance by pinpointing any problems or errors in the device’s performance. No imagination would be needed to be employed by the consumer to make an unambiguous connection between the applicant’s trade mark and such characteristics of the goods (13/12/2006, R1200/2006-2, PINPOINT, § 14).

In order for the Office to refuse to register a trade mark 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). It is also irrelevant whether there are other, more usual signs or indications for designating the same characteristics of the services referred to in the application for registration than those of which the mark concerned consists (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 57). Therefore the applicant’s claim that there is a perceptible difference between the term ‘PINPOINT’ and expressions actually used to describe the characteristics of goods in relation to ‘predictive maintenance monitoring device for continuous monitoring for partial discharge within electrical switchgear or bus duct’, is not persuasive.

Therefore, it is established by the Office that the expression contains obvious and

direct information on the intended purpose of the goods in question.

2. Secondly, according to the case-law of the Court of Justice, the fact that a sign informs the public of a characteristic of the goods and services is relevant to conclude that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, ‘Deutsche Krankenversicherung’, § 21). Since it has been demonstrated that the sign ‘PINPOINT’ is descriptive of the goods concerned, it is, on that account necessarily devoid of any distinctive character in respect of those goods for the purposes of Article 7(1)(b) EUTMR. Therefore, the sign ‘PINOINT’ is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

3. Finally, as regards the applicant’s argument that the Office has already accepted similar marks for registration, some of which also have a monitoring function, 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).

The applicant provides a number of registered ‘PINPOINT’ word and figurative marks. On the other hand, the Office points that a number of the first instance decisions (i.e. 11498722, PINPOINT; 17959452, PINPOINTER) and the decisions of the Boards of Appeal found to be ineligible for protection in respect of ‘PINPOINT’-based EUTM applications in class 9, i.e. 13/12/2006, R1200/2006-2, PINPOINT.

The above only confirms that 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. Each trade mark application requires separate examination. Therefore, the reasons for their registrations would not necessarily apply to the applicant’s mark in question.

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 18226311 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.

Laima IVANAUSKIENE