June 2011

New Decisions from the Boards of Appeal

Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'.

E .g. Case R 219/2004-1 has to be entered under 'Appeal Nº' as: 0219/2004-1

Article 7(1)(b) and (c) CTMR – Absolute grounds for refusal – Minimun degree of distinctiveness.

Decision of the First Board of Appeal of 6 April 2011 in Case R 1935/2010-1 (English).

The applicant sought to register the word mark UNIFORM WORKS for goods in Class 25, namely ‘clothing; footwear, including clogs; headgear including chef hats, head wraps, berets, toques, beanies, neckerchiefs, baseball caps; work wear, including pants, shirts, jackets, chef coats, children's chef coat and pants, shirts, polo shirts, vests, ties, bow ties, waiter's uniform, casino uniform, hospitality uniform, aprons; ties and belts for wear’. The examiner rejected the CTM application in respect of all of the goods on the grounds that the trade mark applied for was devoid of any distinctive character and was descriptive within the meaning of Article 7(1)(b) and (c) CTMR. The examiner indicated that the relevant public would understand the mark as meaning ‘a set of standard clothing worn by members of an organisation while participating in that organisation’s activity/works, a place or establishment for manufacturing’.

The Board observed that the goods of the application encompass all sorts of clothing articles, for both professional and non-professional use. Therefore, the targeted public is the general consumer, who buys clothing articles for everyday use, and the professional consumer, such as restaurant chefs and waiters, throughout the European Union.

The Board noted that what the examiner attempted to say is ‘uniforms worn by people at work’ or, simply, ‘work uniforms’. Yet, this is not the grammatically correct meaning of the expression making up the sign. For the expression ‘Uniform Works’ to have a grammatically correct content in English at all, ‘uniform’ must be a noun and ‘works’ a verb in the third person singular. But the result is, semantically, bizarre: a uniform that works. For this reason, it is unlikely that the mark will be understood as such by English-speaking consumers. The expression might nevertheless be a correct construction where both terms are nouns. It replicates expressions like ‘Steel Works’, which designates a place where steel is manufactured. However, the word ‘works’, as a manufacturing place, is somewhat obsolete and places where uniforms are stitched together are not usually called, in ordinary English, ‘Uniform Works’. For this reason, the average English-speaking consumer will not understand the mark as designating the place where the products are made. The meaning given to the expression by the examiner corresponds to the expression ‘Work Uniforms’ but not to the sign applied for as such.

The mark, nevertheless, could be perhaps be considered allusive of the goods, in so far as it contains the words ‘uniform’ and ‘work’. However, as result of (i) the order of the words and (ii) the spelling of one of them, the mark can no longer be said to be the usual, or a possible, designation of the goods. The difference between the expressions UNIFORM WORKS and ‘Work Uniforms’ is sufficient, in the Board’s opinion, to raise the mark just above the minimum distinctive character that is needed to avoid rejection under Article 7(1)(b) and (c) CTMR. Consequently, the contested decision was annuled.

Article 7(1)(b)CTMR – Absolute grounds for refusal – Position Mark.

Decision of the First Board of Appeal of 31 March 2011 in Case R 1674/2010-1 (English).

The applicant sought to register a sign described as a ‘Position mark consisting of a pair of strips on the back of a garment. The strips are generally vertically oriented and diverge with respect to the upward direction. The broken lines are not part of the trade mark but merely illustrate the surrounding environment in which the mark may be used’. It is represented as follows:

The application was related to protective apparel for fire-fighters in Class 9. The examiner rejected the application because of a lack of distinctive character on the ground of Article 7(1)(b) CTMR.

In the Board’s opinion, the ‘position’ of the mark is not an element of the mark but the particular place on the product where that mark is affixed. The owner of a trade mark has the right, under Article 9 CTMR, to position it anywhere on the product. The position of the mark, therefore, should not influence the assessment of whether it is distinctive or not. As a result, the positioning of the mark on the back of the garment – as claimed in the CTM application – or on the front of it or on the sleeves, for example, has no bearing on the assessment of absolute grounds for refusal. Moreover, the expression ‘protective apparel’ is very broad and does not only include the jacket featured in the mark, but also trousers, boots, helmets, gloves, goggles, etc. The validity of the mark must be assessed in respect of these goods, too.

The consumers targeted by the products are mainly private or public authorities which set up fire brigades and are responsible for choosing and buying firemen’s equipment. This public can be expected, in view of the particular nature of the products, to be highly attentive, well informed and discerning.

The two strips form a V and are said to be made of a material designed to reflect light in the dark, an element which is commonly compulsory on protective apparel. In this regard, the applicant supported that according to the norms of the sector, strips appear, on garments, either horizontally or vertically or both horizontally and vertically, whereas in its application they appear in a ‘V’ shape in the mark.

The Board underlined that consumers are well-informed enough to consider the strips as functional. It would not be reasonable to expect highly observant consumers to buy life-saving equipment simply on the basis of how purely functional elements (such as reflective strips) are arranged on that equipment. In relation to these goods, designed to prevent accidents, quality is of the essence. For this reason, the industrial origin is what guides consumers and it is difficult to imagine that people selecting protective apparel will not want to rely on more secure means of identifying the maker, such as word marks stitched inside the garment.

The fact that the ‘V’ shape produces a ‘different look’, as the applicant argues, does not necessarily imply that the shape can function as a trade mark. Consumers will merely consider the shape as one of the innumerable ways of arranging reflective elements on protective apparel but they will not associate it to a specific industrial origin. They will merely perceive it as a technical means to ensure the visibility of the protective apparel (and, by extension, of the people who wear it). Moreover, such a sign is graphically far too simple and completely unable to transmit any message in relation to the goods that a potential buyer may refer to in order to remember the mark and use it as a sign to identify the goods on the marketplace. Consequently, the appeal was dismissed.

Articles 92 and 93 CTMR – Professional representation.

Decision of the First Board of Appeal of 22 March 2011 in Case R 1629/2009-1 (English).

In the present case, the Board observed that the protection of the International Registration had been refused, due to the holder – domiciled outside the Union – not having appointed a professional representative within the meaning of Article 93(1) CTMR. From the letterhead of the contested decision it appeared that the refusal was based on ‘Articles 7, 92(2) and 93(1) CTMR and Rule 11(3) CTMIR’.

The Board held that none of the quoted articles or rules establish that a CTM application may be rejected (or protection of an International Registration may be refused) if an applicant (or the holder of an International Registration) does not appoint a professional representative within the meaning of Article 93(1) CTMR.

It noted in particular that Article 92 CTMR does oblige the applicant of a CTM (or the holder of an International Registration designating the European Union) who is not domiciled in the Union to be represented before the Office in accordance with Article 93(1) CTMR, but it does not set out any sanction – let alone a rejection of the application – for failure to do so. Moreover, Article 93(1) CTMR does not establish any sanction, either. The Board also observed that Rule 9(4) CTMIR would not have been a proper legal basis for refusing protection either.

In the Board’s opinion, the requirement set out in Article 92(2) CTMR is not a ‘formal requirement governing CTM applications’ but a ‘substantial requirement governing persons’ representation before the Office. The failure by the applicant (or by the holder of an IR) to appoint a representative within the meaning of Article 93(1) CTMR may not be sanctioned by the rejection of the CTM application (or, mutatis mutandis, by the refusal of protection in the European Union of an International Registration) but, at most, to a situation where the prosecution of the CTM application (or, mutatis mutandis, of the International Registration) is suspended for as long as an appropriate interlocutor for the Office is not appointed.

The Board considered that the appointment of a representative within the meaning of Article 93(1) CTMR, made by the holder in the statement of grounds of appeal, is effective, even if made outside the time-limit set out by the Trade Marks Department. Consequently, the contested decision was annulled.

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New Decisions from the Boards of Appeal