The Board of Appeal of EUIPO has issued an interesting decision in case R 362/2017-4 which concerns an attempt for registration of the following European trademark for the following classes:
Class 6 – Common metals and their alloys; Metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; Safes; common metals;Ores.
Class 14 – Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments; precious metals.
Class 40 – Treatment of materials, namely metal coating; treatment of precious and common metals; treatment of alloys.
Against this mark, a refusal was issued based on absolute grounds for refusal Article 7(1)(b) and (c) EUTMR in conjunction with Article 7(2) EUTMR.
The Office considered that the sign was lack of distinctive character in connection with the abovementioned classes. The examiner pointed out that ‘SILVER’ is descriptive for precious metals whereas ‘ECO’ denoting ecology or ecological. The combination would be understood by the relevant public, made up of English-speaking end consumers and professionals, as the meaningful expression ‘ecological element’.
However, the EUIPO’s Board of Appeal overruled this decision. According to the Board, “the applied-for mark is a ‘neologism’ in the sense that in its combination it does not appear in dictionaries whereas each of its word elements do. For this type of marks, the general rule is that the mere combination of descriptive elements itself remains descriptive unless because of the unusual nature of the combination, the term concerned creates an overall 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.”
The Board considers that the combination between Eco and Silver is distinctive enough because there is no particular understanding what exactly is eco silver. On top of that the presence of colors and graphics, including the human image, support distinctive character of the sign.