PURE Pb | Decision 541/2016-2
Date Published: Oct 1, 2017
THE BOARDS OF APPEAL
DECISION of the Second Board of Appeal of 6 June 2017
In Case R 1541/2016-2
C&D Technologies, Inc. 1400 Union Meeting Road Blue Bell, Pennsylvania 19422 United States of America IR Holder / Appellant represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom
APPEAL relating to International Registration No 1 264 378 designating the European Union
THE SECOND BOARD OF APPEAL
composed of T. de las Heras (Chairperson), C. Negro (Rapporteur) and H. Salmi (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
Decision
Summary of the facts
1 By an international registration dated 28 July 2015 designating the European Union and received by the Office on 10 September 2015, C&D Technologies, Inc. (‘the IR holder’) sought to protect in the European Union the figurative entirely
2
for the following list of goods:
Class 9 − Industrial batteries.
The IR holder described the mark as follows:
The mark consists of a capital letter P and a lower-case b. To the left of the Pb is the word PURE, shown vertically in capital letters with the P on the bottom and the E on the top. To the right of the Pb is a plus sign within a circle.
2 The IR holder disclaimed the letters ‘PB’.
3 On 11 September 2015, the mark applied for was republished by the Office.
4 On 25 September 2015, the examiner sent the IR holder a letter of provisional refusal of protection on the grounds that the application did not appear to be eligible for registration under Article 7(1)(b) and (c) in conjunction with Article 7(2) EUTMR, in respect of all of the goods. The examiner stated the following:
– The objectionable goods covered by the mark applied for are ‘industrial batteries’, which are mainly aimed at a professional public. The awareness of the relevant public will be that of the average customer in the professional field who is reasonably well-informed and reasonably observant and circumspect. The relevant public with reference to whom the absolute ground for refusal must be examined is the English-speaking consumer in the Union.
– The mark contains the elements ‘PURE Pb +’, which have, inter alia, the following meaning(s): ‘PURE’ = not mixed with other any extraneous or dissimilar materials, elements, etc.; free from tainting or polluting matter; pure water; and ‘Pb’ = the chemical symbol for lead; and ‘+’ = mathematical symbol plus (see the Collins Concise Dictionary).
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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– The elements ‘PURE Pb +’ immediately inform consumers without further reflection that the ‘industrial batteries’ applied for use pure lead without additives, which is a description of quality as regards the goods in question. The plus sign refers to the plus sign of a battery, thus it is non-distinctive, as well as to a gain or advantage, for example, in quality, in which case it is descriptive and non-distinctive.
– The mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind and quality of the goods in question.
– Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.
– Although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the mark applied for as a whole with any distinctive character. The word elements are represented in a standard typeface. The word ‘PURE’ is positioned vertically at the beginning and the plus sign is set within a circle, as commonly shown on batteries. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods applied for.
– Potential consumers will not see the mark ‘PURE Pb+’ as a fanciful trade term or a trade mark denoting a particular source of the goods concerned, but as common descriptive indications that could refer to pure lead batteries of any undertaking.
5 On 18 November 2015, the IR holder responded to the provisional refusal
stating that:
– The goods covered by the present designation are industrial batteries unlimited by their particular type. Therefore, the objection based on Article 7(1)(c) EUTMR cannot be maintained for any industrial batteries that are not based on lead chemistry.
– The average consumer of the specified goods is a member of the professional public. It is possible, however, that the professional average consumer of industrial batteries is not sufficiently well-versed in matters of chemistry to know that ‘Pb’ is the chemical symbol for lead. The letters ‘PB’ do not contain any reference to the word lead.
– Even for consumers that do have knowledge of chemistry the ‘PURE Pb’ logo is distinctive since the message alleged by the Office does not make any sense in the context of lead battery chemistry.
– The Office states that ‘PURE Pb’ has the descriptive message that ‘the industrial batteries applied for use pure lead without additives’ and that this is a description of the quality of the goods in question.
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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– However, a battery which contains pure lead without additives simply would not work and it is certainly not, therefore, an indication of quality. In order for the reaction to work (and thus for the battery to function) the battery must also contain lead oxide (PbO2) and sulphuric acid (H2SO4). The professional average consumer would be well aware of this and would not attribute a descriptive meaning to the mark.
– The Office states that ‘the plus sign refers to the plus sign of the battery...as well as to a gain or advantage, for example, in quality’. That is an example of artificially breaking the mark down into its component parts and the professional average consumer would not perceive this alleged meaning.
– The average consumer will regard the mark as a whole and will presume that the plus sign is an indication of an electric charge on the lead ion (Pb +) since in chemical notation the indication of electric charge is always in superscript after the element/molecule bearing the charge. This does not make sense in the context of lead-based batteries.
– The mark in question is not descriptive; the logo has distinctive character for the goods at issue and certainly the capacity to distinguish the goods of the IR holder from those of other parties.
– Novelty, imaginativeness or creativity on the part of the proprietor is not a requirement for distinctive character and a minimum degree of distinctive character is all that is needed.
– The Office has registered a number of similar trade marks for batteries in Class 9. These marks have a similar level of inherent distinctiveness and have been deemed prima facie distinctive by the Office. The IR holder requests that the same standard of examination should be applied here.
– In the event that the objections are maintained, the IR holder hereby
reserves the right to file evidence of acquired distinctiveness.
6 On 26 February 2016, the examiner sent the IR holder a second letter of provisional refusal of protection and invited the IR holder to submit evidence of acquired distinctiveness within a two-month deadline to overcome the ground of refusal of protection. She stated that if the IR holder failed to do so the mark applied for would be refused. The examiner stated the following:
– The goods for which registration is sought are industrial batteries in Class 9. Industrial batteries encompass a wide range of chemicals, inter alia, lead, used in lead-acid batteries for automobiles. The chemical symbol for lead is Pb (from the Latin ‘plumbum’).
– The verbal elements of the mark, ‘PURE Pb +’, immediately inform the relevant public that the industrial batteries for which registration is sought use pure lead without additives; in other words, they describe the quality of the goods in question. The plus sign in a circle either refers to the plus sign of a battery (symbolising positive electrical polarity), in which case it is non-distinctive, or to a gain or advantage, for example better quality or duration, in which case it is descriptive and non-distinctive.
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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– All the elements of the mark are depicted in a common typeface. The word ‘PURE’ is positioned vertically at the beginning of the mark and the plus sign is set within a circle, as commonly shown on batteries. The combination of the elements of the mark as a whole is banal and does not enable the relevant public to distinguish the goods offered by the IR holder of the mark from those of its competitors in the relevant field.
– The mark ‘PURE Pb +’ as a whole is descriptive of the kind, content and quality of the goods in question and will not be perceived as an indication of origin or as a trade mark.
– The goods applied for include batteries containing lead. If the batteries in question contained no lead but other chemical substances, the mark would be misleading and objectionable under Article 7(1)(g) EUTMR.
– According to the Batteries Directive (Directive No 2006/66/EC), battery producers in the European Union must ensure that all batteries placed on the market are labelled with, inter alia, the crossed-out wheelie bin symbol and the chemical symbol of content if the battery exceeds certain concentrations of mercury, cadmium, or lead (lead > 0.0004%). Therefore, it can be presumed that consumers in the relevant trade circles are familiar with the abbreviation ‘Pb’, the chemical symbol for lead, as the chemical content of a battery is quite important with regard, inter alia, to its disposal.
– A lead-acid battery is the oldest type of rechargeable battery and it is still commonly used. When the symbol ‘Pb’ is applied to the goods in question, consumers in the relevant trade circles will associate it immediately with lead.
– The expression ‘pure lead’ is descriptive for a certain kind of lead batteries,
even if their content is not 100% pure lead.
– The positioning of the word ‘PLUS’ at the end of the expression has been regarded in many decisions as grammatically correct and as referring to a gain or advantage, for example in quality, duration, rechargeability, etc. Furthermore, the ‘+’ sign in the mark in question is a depiction of the plus sign commonly used on batteries to indicate positive electrical polarity and, as such, is non-distinctive for batteries.
– The relevant English-speaking customer will immediately perceive the verbal elements of the mark, ‘PURE Pb +’, as a descriptive and promotional message that merely serves to highlight the content, kind and quality of the industrial batteries offered.
– Regarding the figurative mark, the individual elements as well as their overall combination are commonly used in relation to the goods for which registration is sought. The figurative mark as a whole consists of common English words in a standard typeface. No colours have been claimed, which means that the mark could be presented in any colour and/or colour combination, which would make the mark even more difficult to memorise.
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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– On industrial batteries, it is common practice to indicate certain technical specifications, for example regarding the chemicals contained, voltage and ampere measurements, model or serial numbers, advice for disposal and recycling, etc. Therefore, the figurative sign in question will be seen as an ordinary indication of technical information on the batteries in question, and not as an indication of commercial origin or a trade mark.
– The figurative mark, when used with the goods at issue, will not be seen as unique, original or unusual, but will be perceived by the relevant public as an ordinary sign referring to technical data on industrial batteries. Relevant consumers would not consider the sign in question to be a trade mark unless it had acquired distinctive character through use.
7 The IR holder did not submit any evidence of acquired distinctiveness within
the given time-limit.
8 On 4 July 2016, the examiner took a decision (‘the contested decision’) refusing protection of the IR in its entirety for all the goods applied for. It can be summarised as follows:
– The IR holder failed to submit evidence within the granted time-limit that the mark applied for had acquired distinctiveness according to Article 7(3) EUTMR within the relevant territory of the European Union.
– Protection for the mark applied for is refused for the European Union for all of the designated goods, for the reasons set out in the letters of objection W110 and M110, and pursuant to Article 7(1)(b) and (c), and Article 7(2) and (3) EUTMR.
9 On 24 August 2016, the IR holder filed an appeal against the contested decision.
The statement of grounds of the appeal was received on 2 November 2016.
Grounds of Appeal
10 The IR holder requests that the contested decision be annulled. If the Board of Appeal is not inclined to grant the request, it is requested, in the alternative, that the case be remitted to the Examination Division so that the IR holder can prepare and file evidence of acquired distinctiveness. The IR holder reiterates all the arguments put forward before the examiner and adds the following:
– The professional average consumer of industrial batteries can be deemed to be knowledgeable as regards the different types of batteries available, their specific characteristics and chemistries and their appropriateness for use in any given task.
– The Office has not assessed the distinctiveness of the mark from the correct knowledgeable perspective and this has led to the mark being broken up into its constituent parts in an artificial manner.
– The mark has been examined in the form ‘PURE PB’ in combination with ‘+’. This is not correct as the knowledgeable average consumer would not
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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perceive the mark in this way. The fact that the mark applied for contains the ‘+’ symbol in superscript notation completely changes the meaning of the symbol. Given that the specialist and highly knowledgeable average consumer is paying a great amount of attention during the purchasing decision, the fact that the ‘+’ symbol is in superscript notation is sure to be noticed.
– The superscript notation is significant because on seeing the combination ‘Pb+’ instead of ‘PB+’ the knowledgeable average consumer would immediately understand it as a chemical notation and perceive the combination as referring to a lead ion with a single positive electric charge. The knowledgeable average consumer would not perceive ‘Pb +’ as being ‘PB’ in combination with the simple descriptive message ‘PLUS’.
– Even if the general non-specific meaning of ‘PLUS’ were somehow reached indirectly, the only trade marks prohibited by Article 7(1)(c) EUTMR are those which may serve, in normal usage from the point of view of the average consumer to designate the goods and services in respect of which registration is sought – either directly or by reference to one of their essential characteristics (emphasis added).
– The specialist and highly knowledgeable average consumer would be well aware that the ‘+’·symbol in superscript notation in normal usage denotes electric charge on an ion and would immediately perceive it as such and the initial impression on the knowledgeable average consumer would therefore not be a descriptive one.
– The stylisation of the mark reinforces the perception that the combination ‘Pb+’ is to be regarded as a whole unit since these are the only elements in the mark that appear in the normal horizontal, right-to-left configuration. The positioning and orientation of the word ‘PURE’ differentiates it from the combination ‘Pb+’.
– The consequences of this change in perception are important because it clearly differentiates the average consumer’s understanding of the mark from the descriptive significance alleged by the Office. The knowledgeable average consumer would not regard it as ‘PURE LEAD PLUS’ but rather would understand that the word ‘PURE’ relates to the lead ion, ‘Pb+’.
– The concept of ‘pure’ lead ions (or indeed any ion at all) is fanciful. Ions can only ever exist as parts of molecules with other ions or as dissociated ions in a solution. Lead ions (or indeed any ion at all), whatever their charge, can never exist as a ‘pure’ substance.
– The ‘Pb+’ ion is also fanciful in the context of the specific goods at issue since it does not exist at any point in lead-acid battery chemistry. The knowledgeable average consumer would be well aware of this.
– Whilst ‘PURE LEAD’ batteries may be a category of battery on the market there is no such category of pure ‘lead ion’ batteries and, given the chemistry involved, it is not foreseeable that there ever will be.
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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Accordingly, the mark as a whole, and particularly in its stylised form, is not directly descriptive.
– Suggesting that the knowledgeable average consumer would make the intellectual leap from the meaning ‘a pure lead ion battery’ to ‘a pure lead battery with better quality or duration’ is an example of finding descriptive significance in an indirect manner. This is contrary to the principles set out in the case-law of the European Court of Justice.
Reasons
Admissibility
11 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and
49 CTMIR. It is, therefore, admissible.
Preliminary remark on the applicable Regulations
12 Protection in the EU of the international registration was sought before the entering into force (on 23 March 2016) of the new European Trade Mark Regulation (EUTMR) which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (EC) No 207/2009 (CTMR) is applicable to this appeal. However, for easy reference the Board will refer to ‘EUTMR’ and the new terminology introduced by the amending Regulation, bearing in mind that the material changes introduced by the latter Regulation will not apply to the case at hand.
1 On the other hand, since the new European Union Trade Mark Implementing Regulation (EUTMIR) will not enter into force until 1 October 2017, the Board will continue referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).
Article 7(1)(c) EUTMR
2 Article 7(1)(c) of EUTMR provides that ‘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. Furthermore, Article 7(2) EUTMR provides that Article 7(1) EUTMR ‘shall apply notwithstanding that the grounds of non-registrability obtain in only part of the EU’.
3 According to the relevant case-law, Article 7(1)(c) EUTMR prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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4 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 28).
5 For a sign to fall within the scope of the prohibition of that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40, upheld on appeal by 05/02/2004, C-150/02 P, Streamserve, EU:C:2004:75; 22/06/2005, T−19/04, Paperlab, EU:T:2005:247, § 25).
6 The mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26; 27/02/2002, T−34/00, Eurocool, EU:T:2002:41, § 38).
The designated goods
7 The goods applied for in Class 9 consist of ‘industrial batteries’. For the sake of clarity, according to Article 3, point 1 of Directive No 2006/66/EC of the European Parliament and of the Council of 6 September 2006 on batteries and accumulators and waste batteries and accumulators (‘the Batteries Directive’, also cited in the contested decision), relating to definitions in the context of batteries, a ‘battery’ means ‘any source of electrical energy generated by direct conversion of chemical energy and consisting of one or more primary battery cells (non- rechargeable) or consisting of one or more secondary battery cells (rechargeable)’. According to point 6 of the same Article, an ‘industrial battery’ means ‘any battery or accumulator designed for exclusively industrial or professional uses or used in any type of electric vehicle’.
The relevant public
8 The goods applied for are mainly aimed at the professional public, a finding with which the IR holder agrees. Given the nature of the goods in question, the awareness of the relevant public will be that of the average consumer in the professional field who is reasonably well-informed and reasonably observant and circumspect. As the relevant public is made up of professionals, the level of attention of such a public will be high.
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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9 In terms of language, the Board agrees with the contested decision’s finding, undisputed by the IR holder, that the relevant public with reference to whom the absolute ground for refusal must be examined is the English-speaking consumer in the European Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).
The descriptive character of the mark applied for
10 The mark applied for is a figurative sign consisting of the following three verbal elements: ‘PURE’, ‘Pb’ and ‘+’, all of which are depicted in a common typeface, which is slightly stylised. The word ‘PURE’ is positioned vertically in a down-to-top configuration at the beginning of the sign and it is followed by the term ‘Pb’, which is the central verbal element in the sign, appearing in the usual horizontal left-to-right configuration. At the top right end of the mark applied for the verbal element ‘+’ (plus sign) can be seen, written in a bold black colour and set within a grey circle.
11 The Board confirms the definitions of the word elements of the sign provided in the contested decision as extracted from the Collins Concise Dictionary. For the sake of completeness, reference is also made to the corresponding entries taken from the Oxford Dictionary, indicated here below. The word ‘PURE’ means, inter alia, ‘not mixed or adulterated with any other substance or material’ or ‘without any extraneous and unnecessary elements’, while the word ‘Pb’ makes reference to ‘the chemical element lead’. As for the verbal element ‘+’, it refers to ‘the mathematical symbol plus’ or ‘a plus sign’ (see entry for ‘plus’, which also has, inter alia, the following meanings: ‘additional, extra; more than what is normally required or expected’; ‘colloq. after a noun: with additional qualities or features; above average in quality, more or better than is required or expected’; ‘having (something) in addition’ or ‘having a positive electric charge’).
12 In the contested decision it was found that the verbal elements of the mark, ‘PURE Pb +’, immediately inform the relevant public that the industrial batteries for which registration is sought use pure lead without additives; thus they describe the quality of the goods in question. The plus sign in a circle refers either to the plus sign of a battery (symbolising positive electrical polarity), in which case it is descriptive, or to a gain or advantage, for example better quality or duration, in which case it is also descriptive. Thus, it was found that the mark applied for as a whole is descriptive of the kind, content and quality of the goods in question.
13 The IR holder does not contest the definitions of the verbal elements of the sign cited in the contested decision as such, but claims that the fact that the symbol ‘+’ is in superscript changes the meaning of the symbol, with the consequence that the professional consumer targeted will not perceive ‘Pb +’ as being ‘PB’ in combination with the simple descriptive message ‘PLUS’, but rather as referring to ‘a lead ion with a single positive electric charge’.
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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14 The Board does not agree with the IR holder’s argument, which seems rather far-fetched and abstract from the relevant goods, which are industrial batteries. In that respect, it should be recalled that, for the purposes of assessing descriptiveness, it must be determined whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods or services in respect of which registration is sought (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30). In consequence, the possible meaning of the expression covered by the mark applied for should not be examined in the abstract, but in relation to the goods concerned as covered by the mark applied for and the consumers for whom they are intended (12/03/2014, T-102/11, T-369/12, T-371/12, IP Zone et al., EU:T:2014:118, § 30).
15 When seeing the expression ‘PURE Pb’ in relation to industrial batteries, the professional consumer targeted will immediately perceive such an expression in the most likely and natural meaning that it can have with regard to those goods, i.e., that the industrial batteries at issue use pure lead without additives. Contrary to the IR holder’s argument, the fact that the ‘+’ sign is in superscript will not act as a modifier of ‘Pb’ in the sense of ‘a lead ion with a single positive electric charge’, at least for the majority of the public concerned. First of all, the ‘+’ sign is not a mere ‘plus in superscript’ but is a figurative element which appears in a bold black colour and is set against a grey circle. Contrary to the IR holder’s claim, this peculiar representation of the ‘+’ sign is not ‘normally used’ to denote electric charge on an ion. Taking into account the goods in question, the particular stylisation of this element, irrespective of the position of the latter, will most likely evoke for the vast majority of the relevant public the image of the plus sign commonly used on batteries, including industrial ones, to indicate positive electrical polarity, as observed in the contested decision, resulting thus, as descriptive or non-distinctive in relation to the designated goods. In the alternative or rather in addition, a part of the relevant public may perceive the ‘+’ sign as referring to a gain or advantage, for example better quality or duration, in which case it would also be descriptive as well as non-distinctive in view of its laudatory connotation. The Board finds that in either of these cases the ‘plus’ symbol and its particular stylisation will reinforce the descriptive nature of the mark applied for, and upholds the finding of the contested decision as expressed in paragraph 23.
16 It cannot be excluded that a minor part of the relevant public will perceive the compound element ‘Pb+’ as referring to ‘a lead ion with a single positive electric charge’, as the IR holder submits, with the consequence that the sign may have a rather odd meaning of ‘a pure lead ion with a single positive electric charge’. However, the Board recalls in this respect that, according to the relevant case- law, it is not decisive if other meanings exist beside one which has already been found to be descriptive (23/10/2003, C−191/01 P, Doublemint, EU:C:2003:579, § 30-32). A sign must be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (04/05/1999, C-108/97 & C−109/97, Chiemsee, EU:C:1999:230, § 30-31; 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32). Therefore, given that, as observed above, the most likely meanings of the mark applied for perceived by the relevant professional public convey obvious and direct information regarding the kind, content and quality of the goods in
06/06/2017, R 1541/2016-2, PURE Pb + (fig.)
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question, Article 7(1)(c) EUTMR applies and this claim of the IR holder must be dismissed.
17 The Board agrees with the IR holder in that the professional average consumer of industrial batteries can be deemed to be knowledgeable in the different types of batteries available and their specific characteristics. However, in view of the professional nature of the relevant public and their corresponding high level of attention, the Board recalls that a high attentiveness on part of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the opposite, terms which are not (fully) understood by consumers can be grasped immediately by the specialised public, in particular if the sign is composed of words which relate to the field in which the latter public is active (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 27, 28), such case-law being applicable to the present case.
18 The fact that, as the IR holder remarks, the content of the industrial batteries concerned is not 100% pure lead is irrelevant. The IR holder itself admits that ‘PURE LEAD batteries may be a category of battery on the market’ (see point 27 of the statement of grounds of the appeal) as correctly found in the contested decision. In any case, for the sake of clarity, although Article 7(1)(c) EUTMR provides that, if the ground for refusal set out in that Article is to apply, the mark must consist ‘exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, this Article does not require that those signs or indications should be the only way of designating such characteristics (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 42).
19 In addition, the Board finds, in line with the contested decision, that the figurative elements of the sign reinforce its descriptiveness from the perspective of the relevant public for the reasons already outlined, in particular as regards the peculiar stylisation of the ‘+’ sign. Therefore, the Board finds that, when perceiving the mark applied for as a whole, the relevant English-speaking consumer in the EU will directly and immediately perceive the verbal elements of the mark, ‘PURE Pb +’, as embodying a descriptive message which serves the purpose of underlining the kind, content and quality of the industrial batteries offered, and not as an indication of commercial origin.
13 In light of the foregoing, the Board concurs with the contested decision that the mark applied for is entirely descriptive of the goods applied for and has to be rejected on the basis of Article 7(1)(c) EUTMR.
Article 7(1)(b) EUTMR
20 As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein). Thus, such signs will be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods at issue, thus enabling the consumer who acquired them to repeat the experience, if it proves
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to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20). Given that the mark applied for will be perceived as descriptive (in relation to the goods in question) by the relevant English-speaking professional consumers, it is also devoid of any distinctive character within the meaning of Article 7(1) (b) EUTMR.
21 The Board finds, in line with the contested decision, that the sign at issue is also likely to be perceived as a mere laudatory promotional message, given that the wording ‘PURE Pb’ sends the message to consumers that the goods applied for (i.e. industrial batteries) have a positive feature, that is, that they use pure lead without additives. As to the symbol ‘+’, given its particular stylisation and bearing in mind the nature of the goods concerned, it will merely be perceived as a reference to the ‘plus’ sign commonly used on batteries to indicate positive electrical polarity, thus, as a non-distinctive element, and it may also be perceived as laudatory itself to the extent that the ‘plus’ sign can serve to indicate a gain or advantage, for example better quality or duration. As observed, the figurative elements of the sign are clearly inadequate to endow the mark applied for with any distinctive feature.
22 The lack of distinctiveness of the sign applied for is even more evident when considering that the use of the relevant chemical symbol in the labelling of batteries is normal practice expressly foreseen in the ‘Batteries Directive’ (more precisely, in Article 21, paragraph 3), with the consequence that consumers in the relevant trade circles are familiar with the use of the abbreviation ‘Pb’ for the chemical symbol for lead in industrial batteries together with other technical specifications. The IR holder must have been mindful of that when requesting a disclaimer on the term ‘PB’.
23 In view of the above, the trade mark applied for is devoid of distinctive
character under Article 7(1)(b) EUTMR.
Remittal request
24 The IR holder requests that if the Board were not inclined to annul the contested decision, the case should be remitted to the Examination Division so that the IR holder can prepare and file evidence of acquired distinctiveness. However, the Board recalls that the IR holder had already reserved the right to file evidence of acquired distinctiveness of its sign before the examiner (should the latter’s objection be maintained) and on 26 February 2016 the IR holder was expressly granted, for that purpose, a further two-month time-limit within which, however, neither evidence nor observations in that respect were filed. Therefore, given that the IR holder was already expressly given the opportunity to avail itself of the exception foreseen by Article 7(3) EUTMR but failed to make use of it, and considering that these kinds of requests cannot be used with dilatory purposes, the Board rejects the IR holder’s request.
Prior registration of allegedly similar signs
25 Finally, as regards the IR holder’s arguments on the existence of several EUTMs similar to the one in question which have been registered by the Office, the
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14
Board fully endorses the examiner’s findings and conclusion on the irrelevance of these arguments. Furthermore, it is pointed out that the Boards of Appeal have not emitted any pronouncement on the registrability of the marks cited by the IR holder. The Boards of Appeal cannot be bound by decisions of the Office’s first-instance departments (09/11/2016, T−716/15, REPRESENTACIÓN DEL HIERRO DEL BOCADO (fig.) / REPRESENTACIÓN DEL HIERRO DEL BOCADO (fig.) et al., EU:T:2016:649, § 109).
26 For the sake of clarity, the Board recalls that the registrability of a sign as an EUTM must be assessed solely on the basis of the EUTMR, as interpreted by the European Union judicature, and not on the basis of previous Office practice (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47). The registrability of a trade mark has to be examined for each and every trade mark application separately and on its own merits and not by reference to other applications.
27 While it is true that the Office should strive for consistency and use the same criterion for registration, it must be taken into account that registration practice develops over time and it is inevitable that questionable marks sometimes find their way onto the EUTM register. Furthermore, such marks may be challenged within the framework of cancellation proceedings. Accordingly, 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 or her claim, on unlawful acts committed in favour of another (27/02/2002, T- 106/00, Streamserve, EU:T:2002:43, § 67).
Conclusion
28 In light of the foregoing, it has become apparent that the mark applied for falls within the scope of the grounds for refusal set out in Article 7(1)(b) and (c) EUTMR because of the way in which the sign would be perceived by the relevant professional consumer in respect of the goods for which registration is sought. Therefore, the contested decision’s findings are upheld.
29 Consequently, the appeal is dismissed.
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Order
On those grounds,
THE BOARD
hereby:
Dismisses the appeal.
Signed
T. de las Heras
Signed
H. Salmi
Registrar:
Signed
H. Dijkema
Signed
C. Negro
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