(EU trade mark– Application for EU word mark SOILXPLORER– Absolute ground for refusal– Descriptive character– Article7(1)(c) of Regulation (EU) 2017/1001

1On 30March 2020, the applicant, CNH Industrial NV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14June 2017 on the European Union trade mark (OJ 2017 L154, p.1).

2Registration as a mark was sought for the word sign SOILXPLORER.

3The goods in respect of which registration was sought are in Classes7 and 9 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–Class7: ‘Agricultural implements for soil mapping and for sensing, monitoring, and analysing soil; and parts therefor’;

–Class9: ‘Electronic soil sensors’.

4By decision of 21December 2020, the examiner dismissed the application for registration of that mark on the basis of Article7(1)(b) and (c) of Regulation 2017/1001.

5On 22February 2021, the applicant filed a notice of appeal with EUIPO, pursuant to Articles66 to 71 of Regulation 2017/1001, against the decision of the examiner.

6By decision of 26March 2021 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, first of all, it defined the relevant public for the goods referred to in the application for registration as being composed of professionals and decided to take into account the English-speaking part of that public, located in Ireland and Malta. Next, examining the descriptive character of the mark applied for, it found that that mark would be perceived by the relevant public as the English expression ‘soil explorer’, which would be understood as designating the intended purpose of the goods at issue and not as a mark capable of indicating their commercial origin. It inferred from this that the mark applied for was purely descriptive of those goods. Finally, examining the distinctive character of that mark, the Board of Appeal found that the relevant public would perceive that mark as mere information referring strictly to the purpose of the goods at issue. It added that the relevant public, first, would read and pronounce that mark as the expression ‘soil explorer’ and, secondly, would perceive the fact that the word ‘explorer’ is written as ‘xplorer’ and the fact that the words ‘soil’ and ‘xplorer’ are joined as inaudible graphic artifices not conferring distinctive character on the mark applied for.