Association negotiation

1st Sep 2019

The Applicant established the necessary links, reports Eleni Mezulanik. 000027462 C, Mersen France Amiens SAS v AB Dynamoborstfabriken, EUIPO, 22nd May 2019.

Association negotiation

000027462 C, Mersen France Amiens SAS v AB Dynamoborstfabriken, EUIPO, 22nd May 2019

Mersen France Amiens SAS (the Applicant) filed a cancellation action under Article 59(1)(a) in conjunction with Article 7(1)(c) EUTMR against registered EU trade mark No 17805953 (I- BRUSH) in classes 7 and 9 covering various brushes and holders for use in electric and electronic machines, apparatus and instruments in the name of AB Dynamoborstfabriken (the Proprietor). 

The Applicant cited well-established case law and submitted dictionary evidence in order to argue that the mark was descriptive within the meaning of Article 7(1)(c) EUTMR. The Applicant’s arguments focused on the mark being purely descriptive in relation to the goods all being (electric) brushes or brush holders (characterised by a brush) that are internet-activated/interactive or otherwise internet-related. As such, the Applicant argued that the elements “I” and “BRUSH” together would be perceived by the relevant consumer as a designation of the technical goods in question, bearing in mind that the awareness of the relevant public is high. 

The Proprietor filed counterarguments against the descriptiveness objection and filed arguments on the basis that brushes are not interactive or internet-based. The Proprietor also included other examples of marks prefixed with “I” that have been registered by the EUIPO. 

When assessing whether a mark is descriptive, it is settled case law that it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (T-311/02 LIMO). Public interest is also taken into account in the assessment of descriptiveness (C-191/01 P, DOUBLEMINT).

It is also settled case law that where a sign is descriptive in respect of a main product (brushes in this case), it is also descriptive of goods that are ancillary or complementary to it. It was held that all of the relevant goods are complex and technical goods, and that the level of attention of the relevant consumer will be high in relation to electrical goods in general. 

The Applicant relied on T-161/09 ilink (paragraph 30) and additional Board of Appeal decisions to support its argument that internet-related goods are commonly prefixed by “I’”. It was held that the Internet of Things is the extension of internet connectivity into physical devices and everyday objects that can communicate and interact with others over the internet and can be remotely monitored or controlled. With regard to the EUTM registrations cited by the Proprietor (including I-cigar and iWine), it was held that trade marks must be assessed as a whole in the context of their particular goods bearing in mind the relevant consumer. Therefore, it is important to note that terms prefixed with “I” combined with another verbal element may not be comparable to this case, and terms which may be considered to be descriptive now may not have been considered descriptive previously.

The Office held that the Applicant succeeded in establishing a direct and specific association between all of the contested goods and the contested mark as a whole, and the registration was declared invalid.

Key points

  • Restricting the Cancellation Division to an examination of the facts expressly submitted does 
  • not preclude it from also taking into consideration facts that are well known, are likely to be known or can be learned from generally accessible sources
  • The Internet of Things is an established commercial phenomenon
  • Office practice and decisions reflect changing markets

Eleni Mezulanik is a Chartered Trade Mark Attorney and Senior Associate at Keltie LLP