OFFICE FOR HARMONIZATION IN THE INTERNAL

MARKET
(TRADE MARKS AND DESIGNS)
The Boards of Appeal

DECISION
of the Fourth Board of Appeal
of 15 July 2013

In Case R 2246/2012-4

Edward Platts
38 Swanbourne Road
Sheffield South Yorkshire S5 7TL
United Kingdom Applicant / Appellant

represented by GRAF GLCK KRITZENBERGER, Hermann-Khl-Str. 2a,

D-93049 Regensburg, Germany

APPEAL relating to Community trade mark application No 10 812 758

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairperson), C. Bartos (Rapporteur) and

E. Fink (Member)

Registrar: P. Lpez Fernndez de Corres

gives the following

Language of the case: English

DECISION OF 15 JULY 2013 R 2246/2012-4 NATO
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Decision

Summary of the facts

1 By an application filed on 17 April 2012 the applicant sought to register the word
mark

NATO

for goods and services in Classes 14 and 35.

2 Following the publication of the application the Office received observations
from a third party which claimed that the application was not eligible for
protection in the sector of watches and watch straps pursuant to
Article 7(1)(b) and (c) CTMR. In the observation it is stated that a NATO strap is
a generic term for a woven nylon watch strap originally one that met an official
military standard for watch straps. Extracts from websites and results of Google
searches in German, English, French, Spanish and Italian, inter alia, were
submitted.

3 As a result of the third party observation the examiner notified the applicant that
for part of the goods and services, the application did not appear to be eligible for
registration because it did not comply with Article 7(1)(b), (c) and 7(2) CTMR.

4 Following the observations by the applicant who maintained its request for
registration and restricted the list of goods and services by deleting watch straps
and a further third party observation the examiner refused the application in
accordance with Article 7(1)(b), (c) and 7(2) CTMR as descriptive and devoid of
distinctive character for the following goods and services:
Class 14 Watches of mechanical, electrical and electronic operation including horological and
chronometric instruments.

Class 35 Retail and whole sale services, including via the Internet and by mail order, in relation
to watches of mechanical, electrical and electronic operation including horological and
chronometric instruments.

5 The examiner stated the following:

NATO is descriptive of a type of watch strap as demonstrated in the annexes

to the observations. Therefore, the sign cannot be registered for watches and
the sale of watches. The restriction of the goods and services by deleting watch
straps cannot overcome the objection since NATO remains descriptive of a
watch with this type of a watch strap, namely a NATO watch strap. The
examiner referred to the result of an Internet search.

Since NATO just denotes a type of a watch strap that is apparently used by
third parties in a descriptive way, the sign is also devoid of any distinctive
character in respect of watches.

That the sign NATO was registered in the USA cannot alter the outcome.

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6 The applicant filed a notice of appeal against the decision followed by a statement
of grounds. He requests the Board to annul the contested decision and to allow
the application to proceed for registration.

7 He argues that relevant consumers, belonging to the broad public, are not aware
of very specific types of wrist straps for watches. The Ministry of Defence
Standard 66-67, Issue 2 for straps submitted with the third party observation
does not refer to the term NATO. Instead the strap is identified as G10. The
document also shows that a strap and a wrist watch are two different items which
are not considered as one unit. It does not matter which strap is used to fix a
watch. The technical function of the watch is not affected by the strap. All the
annexes provided by the third party only refer to straps but not to watches. The
annexes prove that NATO straps are sold as accessories via different distribution
channels independently from watches. The registration of the US trade mark
No 85 054 829 NATO is a strong indication that the sign applied for can be
registered.

Reasons

8 The appeal is admissible but not well founded. The contested decision correctly
concluded that the trade mark applied for is descriptive of the goods and services
for which it was rejected and is devoid of any distinctive character, at least, as
regards the English-speaking public in the European Union (Article 7(1)(c)
and (b) in conjunction with Article 7(2) CTMR).

Article 7(1)(c) CTMR

9 Under Article 7(1)(c) CTMR, 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
services shall not be registered.

10 Pursuant to Article 7(2) CTMR registration of a trade mark may be refused where
the absolute ground for refusal obtains in only part of the Community.

11 In order for a trade mark to be rejected as descriptive, it is sufficient if, for the
public addressed, there is a sufficiently direct and specific relationship between
the word sign filed and the goods or services in respect of which registration is
sought (see judgments of 27 February 2002, T-106/00, Streamserve, para. 44;
of 30 November 2004, T-173/03, Nurseryroom, para. 20; and of
12 January 2005, T-367/02 to T-369/02. SnTEM, SnPUR and SnMIX,
para. 21).

12 The descriptive character of the sign has to be assessed in connection with the
goods and services objected to and by reference to the relevant publics
perception. Watches and sale of watches are aimed at end consumers.

13 The documents submitted by the third party, the UK Ministry of Defence and the
webpage listed by the examiner show that the term NATO is used to refer to a

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certain type of watch strap. For example, the webpage www.mailboxcentres.com

states in respect of NATO watch straps (UK) that the history of the so called
NATO strap goes back to a specification from the UK Ministry of Defence and
that NATO straps are now available in a wide range of colours because to an
extent it has become a fashion item. According to
http://wristsolution.wordpress.com the NATO strap originally identified as G10
by members of the British military got its name of NATO [] because the strap
carries a NSN or NATO stock number. The extract also submitted from
www.wristwatchreview.com states the strap that collectors call NATO is
based upon the standard watch strap issued by the British Ministry of Defence.
The extracts, also submitted from a search conducted on Google.co.uk but also on
Google.de, Google.it, Google.fr and Google.es in respect of nato straps, show
that NATO is used to denote a watch strap that can be bought through different
companies.

14 Accordingly the documents prove that, at least, for the English public the term
NATO is descriptive of the kind of the goods and services. Attached to the
goods watches of mechanical, electrical and electronic operation including
horological and chronometric instruments the public will assume that the
watches have a NATO strap. In respect of retail and whole sale services,
including via the Internet and by mail order, in relation to watches of mechanical,
electrical and electronic operation including horological and chronometric
instruments the word NATO directly describes that both retail and wholesale,
comprise watches with NATO straps.

15 The applicant argues that a strap and a wrist watch are two different items which
cannot be considered as one unit and that the technical function of the watch is
not affected by the strap. However, a strap is a necessary accessory for a wrist
watch. A wrist watch cannot be used correctly without a strap; neither can a strap
be used without a wrist watch. Therefore, there is a direct and specific
relationship between the word sign filed and the goods or services in respect of
watches which can comprise a NATO strap. Furthermore, consumers who will
see a NATO watch will assume that this watch has also a NATO strap. Even if
straps are sold separately, watches are normally only sold with straps.
Consequently, the sign also indicates a characteristic of the goods in question.

16 The previous trade mark registration by the USPTO cited by the applicant cannot
lead to a different result, since the eligibility for protection is to be assessed only
in accordance with the legal provisions of the CTMR and earlier registrations
outside the territory of the European Union cannot create any right to equal
treatment (see judgment of 8 July 2004, T-289/02, Telepharmacy Solutions,
para. 59).

Article 7(1)(b) CTMR

17 In accordance with consistent case-law of the Court of Justice, distinctive

character within the meaning of Article 7(1)(b) CTMR means that the mark
applied for must serve to identify the goods or services in respect of which
registration is applied for as originating from a particular undertaking, and thus

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distinguishing the goods or services from those of other undertakings (see

judgment of 21 October 2004, C-64/02 P, Das Prinzip der Bequemlichkeit,
para. 33).

18 Since the sign for which protection is sought is a purely descriptive indication,
according to case-law, it is also devoid of any distinctive character within the
meaning of Article 7(1)(b) CTMR (see judgments of 12 February 2004, C-
265/00, Biomild, para. 19; and of 12 February 2004, C-363/99, Postkantoor,
para. 86).

19 The term NATO will be perceived as descriptive for the kinds of the goods and
services rejected and as such cannot serve to identify the refused goods and
services as originating from a particular undertaking.

20 Consequently, the appeal had to be dismissed.

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Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

D. Schennen C. Bartos E. Fink

Registrar:

P. Lpez Fernndez de Corres

DECISION OF 15 JULY 2013 R 2246/2012-4 NATO