(Trade mark without text) | Decision 677/2016-2

THE BOARDS OF APPEAL

DECISION of the Second Board of Appeal of 8 March 2017

In Case R 677/2016-2

Chang-Loon Industrial Co., Ltd. No 5, Chang Ma Street Hsiu Shui Hsiang, Chang Hua Hsien Taiwan Applicant / Appellant represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain

APPEAL relating to European Union trade mark application No 14 590 996

THE SECOND BOARD OF APPEAL

composed of R. Ocquet as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Second Board’s Resolution No 2014-1 of 3 June 2014 on decisions by a single Member

Registrar: H. Dijkema

gives the following

Language of the case: English

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Decision

Summary of the facts

1 By an application filed on 24 September 2015, Chang-Loon Industrial Co., Ltd.

(‘the applicant’) sought to register the position mark

for the following goods:

Class 8 ‒ Wrenches.

2 The applicant described the mark as follows:

The colour red is claimed as a feature of the mark. The mark consists of the colour red applied to the inside non-metal insert on the box end of the wrench. The matter shown in broken lines indicates placement of the mark on the goods and neither the matter shown broken lines nor the configuration of the goods are claimed as a feature of the mark.

3 On 5 October 2015, the examiner sent the applicant 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) EUTMR in respect of all the goods claimed. The examiner reasoned in essence as follows:

– The goods covered by the mark applied for are specialised goods which are mainly aimed at a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be high. However, the level of attention paid by the specialised consumer to the appearance of the ‘wrenches’ for which registration is sought is not high since the only feature to which they have to pay attention is the size of the ‘wrench’ (in inches or mm) needed to turn, loosen or tighten nuts and bolts of the same size.

– The mark applied for is not distinctive: the graphic representation depicts the colour red applied to the inside non-metal insert on the box end of the wrench. Taken as a whole, the mark only consists of a coloured element that is typical of the shape of a part of the goods in question. It is not markedly different from various coloured elements commonly used in trade for the goods at issue, but is simply a variation thereof. The sign must be independent or distinguishable from the form or design of the product itself and the positioned elements are not considered substantially different from other designs on the market.

– Furthermore, colours and abstract combinations cannot be regarded as intrinsically distinctive save in exceptional circumstances which are not met in the present case.

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– It follows that the element in question will not enable the relevant public to distinguish immediately and with certainty the applicant’s goods from those of another commercial origin and hence, that the sign applied for is devoid of any distinctive character for the ‘wrenches’ for which registration is sought.

4 On 25 January 2016 (after an extension of the deadline), the applicant responded to the provisional refusal. Its arguments have been summarised by the examiner as follows:

– There are no identical or similar signs used by the applicant’s competitors. The colour sign applied to the products ‘wrenches’ stands out from the usual appearance of those products and serves to distinguish the wrenches of the applicant from those of its competitors departing from the general norms of the sector. This is illustrated by the numerous images of wrenches obtained through the internet including the Google images of wrenches as well as the Wikipedia article for the term ‘wrench’ showing the different kinds of wrenches that exist and the extracts from different web pages selling wrenches online, all attached as Annex 2.

– In determining whether or not a special feature incorporated to the goods applied for has distinctive character, the character of these goods should be taken into consideration. The ‘wrenches’ applied for usually have a limited surface area and various sizes. The smallest one may have a width less than one cm only. This means that the space on the goods, which can be used by the applicant to establish a distinctive sign is extremely restricted. After a thoughtful consideration and a lot of testing, the applicant concluded that using a coloured ring insert in the box end, which is a position usually used to mark the specific size of the wrench and easily seen by consumers to establish a unique identification sign was the best approach.

5 On 16 February 2016, the examiner took a decision (‘the contested decision’) entirely refusing the trade mark applied for. It can be summarised as follows:

– As stated in the letter of provisional refusal, taken as a whole, the sign applied for only consists of a coloured element that is typical of the shape of a part of the goods in question. The coloured element is indeed not markedly different from various coloured elements commonly used in trade for the goods at issue, but is simply a variation thereof.

– In that connection, the various pages of examples of wrenches extracted from a search on Google for images of ‘wrenches’ provided by the applicant in Annex 2 do not incorporate colours. It is hardly an example of the use of colour for wrenches in the marketplace. If one wanted to conduct a proper search on Google, one would search ‘coloured spanners’, ‘coloured wrenches’, or, better yet, ‘coloured ratchet rings spanners’ and clearly see the wide array of the use of colour in spanners/wrenches, including the use of colour in the ratchet ring insert.

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– Furthermore, even if it was not the case, it has to be recalled that the fact that no other competitors make use of the same sign cannot automatically indicate that the relevant public will perceive the sign immediately as designating the commercial origin of the goods or service in question.

– In order to ascertain whether the colour red in the ring insert of the spanner/wrench in question may be perceived by the public as an indication of origin, the overall impression created by the appearance of that spanner/wrench must be analysed. The applicant’s argument that wrenches have a limited surface area for the incorporation of a trade mark and thus the use of a coloured ring insert in the box end was the best approach due to its uniqueness makes no sense since, firstly, as can be seen in the Annexes provided by the applicant, many spanners/wrenches have trade marks incorporated on the handle body of the tool and, secondly, as was pointed out before, the idea of incorporating colour in a spanner/wrench is not unique at all, and can been seen in various examples in the marketplace when conducting a correct search.

– The use of a single colour as in the sign applied for in the present case does not add any distinctive character to this sign at all. Even for a well-informed consumer, the positioning of a coloured ring inserted in the ratchet hole of the spanner/wrench, will not be perceived as a trade mark, but rather as decorative material, or perhaps as designating the size of the spanner/wrench for use.

– Accordingly, the sign applied for does not enable the average consumer to identify the goods in question and distinguish them from those of another undertaking. Therefore, the sign applied for is devoid of any distinctive character for the ‘wrenches’ for which registration is sought in the meaning of Article 7(1)(b) EUTMR.

6 On 11 April 2016, the applicant filed an appeal against the contested decision, requesting that the decision be trade mark applied for set aside. The statement of grounds of the appeal was received on 15 June 2016.

Grounds of appeal

7 The arguments raised by the applicant in the statement of grounds may be

summarised as follows:

Information on the applicant

– With its outstanding innovation and development abilities, the applicant is one of the most famous manufacturers of wrenches in Taiwan and sells many products well received by consumers all over the world. Because its newly- developed products are first used and tested by professional users and then improved based on the feedback experiences of the latter, the target public of the applicant gets to know the applicant’s products and identifies them thanks to the sign applied for irrespective of the company selling the products to final consumers.

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Arguments of the applicant

– Reference is made to Article 7(1)(b) EUTMR and related case-law concerning the assessment of the distinctive character in order to assess whether the positioning of the mark upon the goods is likely to be understood as having a trade mark context. In this respect, it should be noted that, given the nature of hand tools and, in particular, wrenches, the relevant public will be attentive to the different aesthetic infrequent details of such products and will perceive the sign applied for as a trade mark.

– In the hand tool context, and given the norms and customs of particular trades, the position mark applied for will appeal to the eye as an independent feature being distinguishable from the product itself and thus communicating a trade mark message. In this respect, it should be noted that the elements of the colour mark are specifically designed and arranged and that it has a peculiar position. In fact, the colour ring insert is made according to a paint- baking way disclosed in the Taiwan Utility Model No. M247346 protected from 21/10/2001 to 23/10/2013. A copy of the Registration Certificate along with its English translation, already presented before the examiner is enclosed as Annex 1.

– There are no other identical or similar signs used by the applicant’s competitors. Therefore, the colour sign applied to the ‘wrenches’ for which registration is sought stands out from the usual appearance of those products and serves to distinguish those of the applicant from those of its competitors.

– Besides, it has to be noted that some position marks have been accepted for registration by the EUIPO in spite of the fact that they could have been perceived as a decoration due to the particular disposition of its colours. Like these marks, the sign applied for can perform a trade mark function.

The sign applied for consists of a sign which departs from the norms used in the sector concerned

– In order to support the argument that the sign applied for consists of a sign which departs from the norms used in the sector concerned, screenshots ‒ which show that, inside the box end of the ratchet wrench, a plurality of elements, such as a ratchet wheel, colours ring insert and C shaped retainer are installed ‒ are attached as Annex 2.

– In the wrenches sector, the ratchet wheel and the ring insert are integrally formed by the same business/trade as one-piece element commonly, without any special design thereto so as to save manufacturing costs. In addition, the aforesaid one-piece element of prior art is usually made in a black colour.

– Despite the increased production costs for inserting the colour ring, the applicant has been installing these ring inserts on the box end of the wrench in such a way that their colour visually stands out to become a unique identification sign that can be easily perceived in the market by the consumers of those products, since at least the year 2003. With the position mark applied for, the applicant is able to individualise its products while still allowing distributors to add their own marks easily. The colour ring becomes

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an independent identification sign even if it is incorporated to the product itself.

– In Annex 3, already presented before the examiner, Google images of wrenches, an extract from the Wikipedia article regarding the term ‘wrench’ and an extract from different web pages selling wrenches online are submitted which demonstrate that the sign applied for clearly departs from the norms of the sector. In particular, none of the depicted products contains a position mark that could be considered similar to the sign applied for.

– In reply to the findings of the examiner that the search enclosed is not sufficient as regards colour wrenches, the results of three Google searches regarding colour wrenches are enclosed as an Annex 4 which show that no position mark is identical or similar to the sign applied for.

– In particular, the only wrenches having a colour ring insert are those offered for sale on the SITEBOX Limited web site, enclosed as Annex 5. They belong to one of the applicant’s distributors (Sealey) that retails its products under the mark ‘Premier’. Evidence showing such commercial relationship is also enclosed in the same annex. Finally, the same enclosure also contains evidence on how the contested sign has been used worldwide as a badge of origin of the applicant and distributed by other companies under additional trade marks (TOP, CAROLUS, POWERBUILT, PERFORMANCE, GOODYEAR, etc…).

The character of the goods applied for should be taken into account in the determination of the distinctiveness of the sign

– The goods for which registration is sought usually have a limited surface area and various sizes. The smallest one may have a width of less than one centimetre only so that the space on the goods which can be used by the manufacturer of the product to establish a distinctive sign is extremely restricted; reason why the applicant thought to use a position mark.

– Thanks to such position, both professionals and average consumers will be able to perceive the presence of the colour insert to identify the manufacturer. In support of this, several declarations of representatives of undertakings purchasing the applicant’s products declaring that they recognize the applicant’s wrenches thanks to the sign applied for are enclosed as Annex 6.

– Finally, concerning the argument that the sign applied for would be perceived only as a decoration, it has to be borne in mind that the fact that a mark serves a decorative or ornamental purpose is per se not sufficient to deny its distinctive character. As a general rule, a sign may fulfil functions other than those of a trade mark as traditionally understood (including decorative function) and at the same time be a distinctive sign for the purposes of Article 7(1)(b) EUTMR, provided that the sign may be perceived immediately as an indication of the commercial origin of the goods in question, which is the case here.

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Reasons

Preliminary remark: applicable Regulations

8 The EUTM application was filed 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.

9 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 keep on referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).

Admissibility

10 The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible. It is however not well founded, for the reasons set out below.

On the substance – Article 7(1)(b) and 7(2) EUTMR

11 According to Article 7(1)(b) EUTMR, trade marks which are devoid of any

distinctive character are not to be registered.

12 The notion of general interest underlying Article 7(1)(b) EUTMR is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of origin of the market product or service to the consumer or end-user by enabling him/her, without the possibility of confusion, to distinguish the product or service from other which have a different origin (08/05/2008, C- 304/06 P, Eurohypo, EU:C:2008:261, § 56 and 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).

13 Article 7(1)(b) EUTMR is thus intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 23).

14 In addition, it must be borne in mind that Article 7(2) EUTMR states that a trade mark shall not be registered even if the grounds of non-registrability are met only in part of the European Union. Since the sign applied for consists of a graphical representation without any words, it will be perceived the same way throughout the Member States of the European Union, irrespective of any linguistic differences (30/09/2009, T-75/08, !, EU:T:2009:374, § 26; 12/09/2007, T-141/06, Texture of glass surface, § 36).

15 The signs referred to in Article 7(1)(b) EUTMR are, in particular, those which do not enable the relevant public to repeat the experience of a purchase 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 of the goods or services concerned (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

16 Therefore, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (08/05/2008, C- 304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein, and 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

17 It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render the ground of refusal set out in that article inapplicable (27/02/2001, T-79/00, Lite, EU:T:2002:42, § 28; 15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68).

18 The distinctive character of a trade mark must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, second, in relation to the relevant public’s perception of the mark, which is composed of the consumers of those products or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

The relevant public and its level of attention

19 The Board recalls that the average consumer’s attention is likely to vary according to the category of services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26).

20 The goods for which registration is sought are ‘wrenches’ in Class 8.

21 The examiner found that the goods concerned are specialised goods and are mainly aimed at a professional public, and that in view of the nature of the goods in question, the awareness of the relevant public will be high.

22 The Board considers that the public targeted by the goods in question consists of professionals and the general public with an interest in DIY activities. Also the consumers belonging to the public at large will have an attention that is above average (see, by analogy, 03/12/2015, T-648/14, DUALTOOLS (fig.), EU:T:2015:930, § 20).

23 In any event, the fact that the consumer pays particular attention when purchasing some of the goods applied for does not mean that the ‘threshold’ for the sign to be considered distinctive must be to a certain extent ‘higher’ in order for that sign to fall under the ground for refusal set out in Article 7(1)(b) EUTMR (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Even taking into account that (part of) the public concerned is considered to consist of especially circumspect individuals, this especially high degree of attention does not mean that the absolute grounds for refusal should be applied to the mark in a more relaxed manner. In the present case, the Board cannot find any valid reason to consider that the greater degree of attention paid by (part of) the

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public constitutes a determining factor as to whether or not the sign will be perceived as a trade mark.

24 Clearly, the relevant public is located throughout the whole European Union, as the perception of the mark will be the same in any Member State (see case-law referred to in paragraph 14).

Overall impression of the sign applied for

25 In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features of the composition of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (25/10/2007, C-238/06 P, Plastikflaschenform, EU:C:2007:635, § 82, and the case-law cited therein). Indeed, the distinctiveness of each element taken separately may be assessed in part, but must in any event depend on an appraisal of the composite whole (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 43).

26 The mark applied for is the following:

27 The Board observes at the outset that, according to the description of the sign provided by the applicant, ‘the colour red is claimed as a feature of the mark’ and the mark ‘consists of the colour red applied to the inside non-metal insert on the box end of the wrench’, which takes a circular form.

28 In essence, therefore, the mark reduces to a simple red circle which follows the contour of non-metal insert at one end of the wrench. It consists of one of the most simplest geometrical figures in a standard colour.

29 As to the colour red, the Board recalls that, while colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (see 06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 40; 24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 38; 12/11/2008, T-400/07, Farben in Quadraten, EU:T:2008:492, § 35

30 As to the circle, according to well-established case-law, a sign which is excessively simple and is constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result

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that they will not regard it as a trade mark unless it has acquired distinctive character through use (25/09/2015, T-209/14, Grünes Achteck (fig.), EU:T:2015:701, § 43; 13/04/2011, T-159/10, Parallélogramme, EU:T:2011:176, § 24; 12/09/2007, T-304/05, Pentagon, EU:T:2007:271, § 23; 28/04/2016, R 1531/2015-1, Device of a wavy rectangle with a bluestripe green colour (fig.), § 20; 13/04/2011, T-159/10, Parallélogramme, EU:T:2011:176, §; 12/09/2007, T- 304/05, Pentagon, EU:T:2007:271, § 23; 13/07/2011, T-499/09, Purpur, EU:T:2011:367, § 25 and 28; 27/10/2016, T-37/16, CAFFÈ NERO, EU:T:2016:634, § 42).

31 Furthermore, as to the combination of the colour red and the circle, it must be mentioned that an objection under Article 7(1)(b) EUTMR is not limited to trade marks which consist of basic geometric figures. It applies to all sorts of ‘extremely simple’ shapes (13/04/2011, T-159/10, Parallélogramme, EU:T:2011:176, § 30) and also to other more complex signs which are unable to distinguish the commercial origin of the goods or services of one undertaking from those which have another commercial origin (09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 26, confirmed by 28/06/2004, C-445/02 P, Glass pattern, EU:C:2004:393, § 33). The Board considers that this is the case here.

32 The colour red is commonly used and is not capable of rendering the contested sign fanciful or unusual (see, by analogy, 09/11/2016, T – 290/15, SMARTER TRAVEL (fig.), EU:T:2016:651, § 39; 27/10/2016, T – 37/16, CAFFÈ NERO (fig.), EU:T:2016:634, § 42; 05/12/ 2007, T-127/06, Saw blade, EU:T:2007:366, § 26; combination blue and white dots 10/09/2015, T-94/14, Device of a coloured pattern (fig.), EU:T:2015:798; grey and white dots 10/09/2015, T-77/14, Device of a grey pattern (fig.), EU:T:2015:620).

33 Consequently, the relevant public will not see the component of the colour red as a sign indicating that the ‘wrenches’ thus coloured come from the same undertaking but will rather see it merely as an aspect of finish of the goods in question (see 09/07/2003, T-234/01, Orange and Grey, EU:T:2003:202, § 41-42).

34 The incorporation of this colour within the circular figure does not confer any distinctive character to the sign, considered as a whole. It is merely an ornamental element (see, by analogy, 31/08/2016, R 1643/2015-4, Representation of rectangle in blue and yellow (fig.).)

35 Indeed, the combination of two non-distinctive elements will not change the perception of the relevant public, since consumers are not accustomed to assuming the commercial origin of products based on a geometrical shape and a simple colour (13/07/2011, T-499/09, Purpur, EU:T:2011:367, § 34).

36 As a consequence, there is nothing complex in the sign applied for. The sign merely combines a basic geometric shape that corresponds to a typical circle and a basic colour without producing any impression to which the relevant public may attach distinctive character. Also, there are no eye-catching features which allow the relevant public to immediately perceive the contested sign as an indicator of the commercial origin of the claimed goods, even assuming a higher degree of attention of part of the relevant consumers.

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37 In view of the above considerations, it has to be examined whether the particular position of this red circle on the goods concerned (since the sign concerned is described by the applicant as a ‘position mark’) can nevertheless render this combination distinctive. This is not the case, as will be seen below.

38 A position mark is a sign in which a certain element, in this case a red coloured circle, on a certain product, in this case a ‘wrench’, always appears exactly in the same position and in the same size, either in absolute terms or relative to the product as a whole.

39 In that regard, the Board recalls that the case-law relating to three-dimensional trade marks consisting of the appearance of the goods themselves, also applies where, as in the present case, the mark applied for is a position mark, since that mark consists of the two-dimensional representation of those goods where the mark is displayed on a specific position. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the goods it covers (11/07/2013, T-208/12, EU:T:2013:376, Rote Schnürsenkelenden, § 34 confirmed by order of 11/09/2014, C-521/13 P, Rote Schnürsenkelenden, EU:C:2014:2222, § 49; 15/06/2010, T-547/08, Orange colouring of the toe of a sock, EU:T:2010:235, § 26 and the case-law cited; 04/10/2007, C-144/06, Washing tablet, red-white with blue centre, EU:C:2007:577, § 43-45).

40 Whether or not the applicant characterises the mark as a 3D mark, a figurative mark or a position mark is, in that respect, irrelevant. The decisive element for the applicability of that case-law is not the categorisation of the sign in question, but rather the fact that it is indissociable from the appearance of the product designated (09/11/2016, T-579/14, Figurative mark representing a pattern of wavy, crisscrossing lines, EU:T:2016:650, § 28).

41 In that connection, it has to be recalled that pursuant to settled case-law, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the goods themselves are no different from those applicable to other categories of trade marks (see 07/10/2004, C-136/02 P, Three- dimensional torch shapes, EU:C:2004:592, § 30; 22/06/2006, C-25/05 P, Representation of a gold-coloured sweet wrapper, EU:C:2006:422, § 26).

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42 Nonetheless, according to equally consistent case-law, the perception of the average consumer is not necessarily the same for trade marks consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes, since average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape, the shape of their packaging, or the colour thereof, in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (09/11/2016, T-579/14, Figurative mark representing a pattern of wavy, crisscrossing lines, EU:T:2016:650, § 24; 11/09/2014, C-521/13 P, Rote Red aglets on shoe laces, EU:C:2014:2222, § 48; 04/10/2007, C-144/06, Representation of a red and white rectangular tablet with an oval blue centre, EU:C:2007:577, § 36 and the case-law cited; 17/01/2006, T-398/04, EU:T:2006:19, § 39 confirmed by 04/10/2007, C-144/06, Washing tablet, red- white with blue centre, EU:C:2007:577, § 43-45).

43 Likewise, in line with the case-law cited at paragraph 29, the public will not instantly perceive a colour which forms part of the external appearance of the goods as reference to the commercial origin of the goods (see 21/10/2004,C-447/02, Orange, EU:C:2004:649, § 78; 15/10/2010, T-547/08, Orange colouring of the toe of a sock, EU:T:2010:235, § 26), because as a rule a colour per se is not, in current commercial practice, used as a means of identification.

44 Besides, it is considered that, the more closely the shape or other elements of the mark for which registration is sought resembles those elements most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character (24/11/2016, T-578/15, DEVICE OF A SOLAR CELL (fig.), EU:T:2016:674, § 16; 07/10/2004, C-136/02 P, Three- dimensional torch shapes, EU:C:2004:592, § 31).

45 Indeed, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of identifying origin is not devoid of any distinctive character for the purposes of that provision (09/11/2016, T- 579/14, Figurative mark representing a pattern of wavy, crisscrossing lines, EU:T:2016:650, § 25; 12/01/2006, C-173/04 P, Three-dimensional shapes of stand-up pouches for fruit drinks and fruit juices, EU:C:2006:20, § 31, and 22/06/2006, C-25/05 P, Representation of a gold-coloured sweet wrapper, EU:C:2006:422, § 28).

Non-distinctiveness of the sign with respect to the goods at hand

46 The examination of the distinctive character of the contested application must be carried out in relation to the claimed goods and services (18/03/2010, C-282/09 P, P@yweb card / Payweb card, EU:C:2010:153, § 37, and the case-law cited therein; 22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 52-53 and the case-law cited therein).

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47 The relevant test for assessing the distinctive character of a sign is whether the sign is inherently capable of being committed to memory by the consumers concerned as a trade mark, when used with respect to the goods and services at issue (28/06/2004, C-445/02 P, Glass pattern, EU:C:2004:393, § 33).

48 The goods in relation to which registration is claimed and was rejected by the

examiner are ‘wrenches’ in Class 8.

49 In the present case, the mark consists of ‘the colour red applied to the inside non- metal insert on the box end of the wrench’. Therefore, it also constitutes a part of the wrench, that is, the inside insert on the box end of the wrench as corroborated by the description provided by the applicant.

50 The coloured circle positioned on a ‘wrench’, which is essentially what the mark is, will be seen as little more than a decorative effect, or merely as an indication of the size of the wrench as suggested by the examiner. Either way, it will certainly not be perceived as an indicator of origin (see by analogy, 25/04/2013, T-145/12, Eco Pro, EU:T:2013,220, § 34 and the case-law cited therein).

51 It cannot be held that the sign applied for departs significantly from the basic shape of a non-metal insert or ring present in a wrench. At most, it could be considered, as the examiner did, that the mark applied for consists of a simple variation of the basic shape of the goods concerned. However, the Board would not even make that concession. The mark is displayed on a standard ‘wrench’. Even though the representation of the shape of the wrench is not claimed as a feature of the mark, as far as can be made out from the representation of the contested sign, there is no deviation whatsoever from the design of an ordinary ‘wrench’ found on the market. Furthermore, the circle, apart from its colour red, does not depart from such basic shape of a ring present in ‘wrenches’ either.

52 In that connection, the Board observes that the results of the Google searches provided by the applicant in its Annexes 3 and 4 include numerous ‘wrenches’, including ‘ratchet spanners’ or ‘combination wrenches’, that are provided with a non-metal ring inserted in the inside of the hole of the ‘wrench’ they represent.

53 Indeed, such kind of non-metal inserts on the hole of the ‘wrench’ can be seen on each page of the results obtained from the Google search performed for ‘wrenches’ as well as on the second of the 12 pages extracted from the website of the hand-tools retailer ‘Stanley’ both enclosed as Annex 3. Likewise, the results corresponding to the Google search performed by the applicant for ‘coloured ratchet ring spanners’, enclosed in Annex 4 in reply to the examiner’s findings include numerous wrenches provided with identical non-metal inserts.

54 Having regard to such significant results displaying ‘wrenches’ provided with non-metal inserts, the Board considers that it can be safely concluded that such features are very common. As illustrated by these documents, non-metal inserts are well known in themselves and customary for ‘wrenches’.

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55 Moreover, even the examples provided by the applicant in Annex 4 show a range of ‘wrenches’ and similar tools with coloured features. Such tools with coloured effects appear commonplace. Moreover, red appears a popular colour. Some of the exhibits are reproduced below:

Annex 4

56 Annex 5 provided by the applicant contains ‘evidential material’ supposedly showing wrenches bearing the mark to ‘distinguish the products’ ‘manufactured’ by the applicant and distributed by other companies such as ‘Top’, ‘Carolus’, ‘Powerbuilt’ ‘Performance’, ‘Goodyear’, ‘Gisuke’, ‘Besto’, ‘Gross’, ‘Licota’, ‘Magnusson’, ‘Repco’ and ‘Kromex’ (page 9 of the statement of grounds). The applicant also states that it has been ‘entrusted’ to manufacture ‘wrenches’ distributed under the ‘Premier’ mark (page 8 of the statement of grounds).

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57 Some of these exhibits are reproduced below:

Annex 5

Premier Top

58 In the Board’s view, rather than the evidence supporting the applicant’s claim that it alone sells ‘wrenches’ with a red (or coloured) insert, the opposite appears to be the case, since other traders employ the same or similar feature. The evidence merely confirms that other tool manufacturers, including leading brands like ‘Goodyear’ and ‘Premier’, sell ‘wrenches’ and other tools with coloured inserts, some of which are identical to those of the applicant’s.

59 The applicant’s relationship to these companies and their brands is unclear. It claims that it has been ‘entrusted’ to manufacture ‘wrenches’ for them, although no evidence has been adduced to establish the truth of that. In any event, it is not legitimate for the applicant to appropriate a particular feature, in this case a coloured insert, evident in tools sold under other brand names, and then claim that this particular feature distinguishes the applicant’s goods from those of other traders. At best, the relevant consumer might associate the mark with the brand name that accompanies the tool, such as ‘Goodyear’, ‘Premier’ or ‘Besto’. However, there is no reason whatsoever why the consumer would associate the feature with the applicant’s company based in Taiwan.

08/03/2017, R 677/2016-2, POSITION OF THE COLOUR RED ON THE INSIDE NON-METAL INSERT ON THE BOX END OF THE WRENCH (posit.)

Powerbuilt Goodyear

Gisuke Besto

60 For the sake of completeness and for merely exemplary purposes, the Board reproduces an image of ‘wrenches’ appearing on the applicant’s website www.chltool.com (according to https://whois.icann.org/ the domain name is registered in the name of the applicant and the applicant’s name appears on the website, with an address in Chang Hua, Taiwan; see by analogy, as to the reference to the applicant’s website: 15/02/2015, T-499/13, Smarter Scheduling, EU:T:2015:74, § 34):

61 Also by way of illustration, the Board reproduces below some examples of ‘wrenches’ provided with non-metal inserts which can be found on the Italian, United Kingdom and Spanish markets:

Italy United Kingdom Spain

http://www.bueni.es/electronica- ferreteria/stanley-llave-combinada- con-carraca-32mm- exp_ca53c2b556dd285113c53c6a15e0f 421_11310903

62 The Board has no information as to whether any of these are actually manufactured by the applicant, though it is clear that, when deciding to purchase a ‘wrench’, consumers would not be able to identify the origin of the goods by the coloured non-metallic ring, since this will give no reliable information concerning the origin of the tool concerned, and consumers will necessarily need to identify the origin of the goods by other elements, possibly by the brand name of the tool concerned, as for example can be seen on an image on the applicant’s

website, www.chltool.com by the sign ‘ProRatchet’

written along the tool:

08/03/2017, R 677/2016-2, POSITION OF THE COLOUR RED ON THE INSIDE NON-METAL INSERT ON THE BOX END OF THE WRENCH (posit.)

http://www.ebay.co.uk/itm/6-32mm- Steel-Fixed-Head-Ratcheting- Ratchet-Spanner-Gear-Wrench- Open-End-Ring-/152241233197? var=451432364232&hash=item237 248dd2d:m:mweyyDhJOWwm4iN1 ZLFH34w

http://www.homedepot.com/p/Husky- SAE-Ratcheting-Combination- Wrench-Set-10-Piece- HRW10PCSAE/204759116

or ‘Chang Loon’

63 Therefore, having regard to these tools commonly sold on the EU market, it is clear that the part of the ‘wrench’ represented in red, which constitutes the contested sign, does not significantly depart from the shape of the same elements of the goods in relation with which protection is claimed. In the Board’s view, having regard to its widespread use on hand tools, red is not particularly distinctive by itself in relation to ‘wrenches’.

64 Taking into account the above said, it is very unlikely in the Board’s view that, when applied to the inside non-metal insert on the box-end of a wrench (which is itself customary for ‘wrenches’), red will be perceived as indicating their commercial origin.

65 In particular, although the non-metal insert represented in the sign is most commonly found in black on the EU market, red inserts are also common. As indicated by the examiner ‘there are some spanners/wrenches which are completely coloured while others have coloured rings around the entire body of the spanner/wrench, and yet others have coloured rings inserted in the ratchet hole of the spanner/wrench’.

Conclusion

66 To sum-up, since, as is apparent, inter alia, from the evidence filed by the applicant in Annexes 3, 4 and 5, numerous hand-tools retailers operating on the EU market offer for sale ‘wrenches’ provided with non-metallic rings inserted in the ratchet hole from which the sign applied for does not significantly depart, consumers cannot perceive the red-circle insert, as indicating the origin of the ‘wrenches’ in Class 8 in relation to which registration is sought. Instead the relevant consumer, no matter how attentive, will simply consider it as a finish of these goods, having a decorative purpose or perhaps being a colour code to indicate the size of the wrenches of interest (see, by analogy, 17/09/2009, R 1753/2008-1, Rote Hülse (posit.), § 24-28).

67 It follows that although it is likely as claimed by the applicant that, on account of its position, consumers will pay attention to the sign applied for when making their decisions to purchase the goods at issue, they will not give to it any trade mark significance unless he or she has been previously educated to do so through intensive use as indicated by the examiner.

08/03/2017, R 677/2016-2, POSITION OF THE COLOUR RED ON THE INSIDE NON-METAL INSERT ON THE BOX END OF THE WRENCH (posit.)

68 This was, however, neither claimed nor proved in the present case. Indeed, the applicant has not invoked Article 7(3) EUTMR at any stage of the proceedings and the declarations from the representatives of seven client companies of the applicant according to which they recognise its products thanks to the coloured ring insert filed as Annex 6 are far from being sufficient to show acquired distinctiveness in the European Union.

69 Finally, no evidence has been provided either that would enable the conclusion that the relevant consumer is accustomed to perceiving a mark of the kind applied for as a means of differentiating between brands and models on the market made by various manufacturers and offered for sale by various retailers, be it per se.

70 By contrast, the evidence filed shows that the relevant public is confronted with a wide range of ‘wrenches’, part of which have the same shape and the same colour as in the sign at hand but also different ones, which in that case, most likely indicates the size of the ‘wrench’ at stake (as stated by the applicant on page 9 of its statement of grounds, the ‘position is usually used to mark the specific size of the wrench’). Along with fact that ‘wrenches’ that are similar or identical to each other (as far as their shape and colour is concerned) are sold under different marks, there is no likelihood that the target public perceive it as an indication of origin of the goods.

Further argument: position marks accepted for registration as EUTMs

71 The applicant refers to earlier position marks accepted for registration as EUTMs, despite consisting of colour combinations that could have been perceived as a decoration, namely the following :

EUTM No 11 494 556 for services in Class 39

EUTM No 13 436 992 for goods in Class 9

72 In this respect, the Board notes it is true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Board must consider whether it should be followed.

73 The Board must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration. If the Board concludes that the mark is barred from registration by the terms of Article 7(1)(b) EUTMR, it cannot decide otherwise simply because an equally non-distinctive mark has been registered in the past.

74 At first glance, the Board nevertheless observes that the cited trade marks are not comparable to the trade mark applied for in the case at hand, as they were, inter alia, filed for completely different goods and services and do not correspond to

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EUTM No 1 920 485 for goods in Classes 2, 3 and 4

EUTM No 13 847 876 for goods in Class 4 and services in Class 35 and 37

the representation of a part of the basic shape of a common hand tool as in the case at hand.

75 Moreover, it has to be recalled that the Board cannot be bound by decisions of first instance Office departments (for example the Examination Division) which have not been appealed (see, with respect to Opposition Division decisions, 13/12/2016, T-58/16,, APAX, EU:T:2016:724, § 38; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 65, second sentence). In particular, it would be contrary to the Board of Appeal’s purpose, as defined in recital 13 and in Articles 58 to 64 EUTMR, for its jurisdiction to be restricted by the requirement to respect the decisions of the first-instance adjudicating bodies of EUIPO (09/11/2016, T-290/15, SMARTER TRAVEL (fig.), EU:T:2016:651, § 73).

76 Furthermore, it must be mentioned that the Office has earlier refused position mark applications filed for goods in Class 8 that, as in the case at hand, corresponded to a colour applied to the representation of a part of the common shape of the goods in relation to which registration was claimed (see 17/09/2009, R 1753/2008-1, Rote Hülse (position mark of a hammer with a coloured sleeve on the shaft); 05/10/2006, R 1476/2005-1, (fig.) (position mark for scissors with two black handles).

77 Finally, in accordance with established case-law, decisions concerning registration of a sign as a European Union trade mark which the Office or the Boards of Appeal are called on to take under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly whilst the Boards strive for decision-making consistency, the legality of the decisions of the Boards must be assessed on the basis of that Regulation, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of the Office or the Boards (05/12/2000, T-32/00, Electronica, EU:T:2000:283, § 47; 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 31; 03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 61; 11/05/2005, T-390/03, CM, EU:T:2005:170; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547).

78 Therefore, if as said, it is true that the Office should endeavour to apply a consistent practice in examining trade marks in relation to absolute grounds for refusal, it remains that observance of the principle of equal treatment must be reconciled with observance of the principle of legality (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67) and accordingly, the applicant cannot rely, in support of its claim, on unlawful acts committed in favour of another.

79 In the present case, it has become apparent that, with respect to the ‘wrenches’ for which registration is sought in Class 8, the application is caught by the grounds of refusal set out in Article 7(1)(b) EUTMR. In these circumstances, the Board is not entitled to find that the trade mark applied for should be accepted because of previous decisions from the Office.

80 It follows from all the above that the mark applied for lacks distinctive character pursuant to Article 7(1)(b) EUTMR. Therefore, the contested decision is upheld and the mark applied for rejected in its entirety.

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Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed

R. Ocquet

Registrar:

Signed

H.Dijkema

08/03/2017, R 677/2016-2, POSITION OF THE COLOUR RED ON THE INSIDE NON-METAL INSERT ON THE BOX END OF THE WRENCH (posit.)

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