In Case T-133/13, Rexair LLC had obtained a CTM for goods and services in Classes 3, 7 and 37 for the sign "WET DUST CAN'T FLY".
Pro-Acqua international GmbH filed a cancellation action against part of the registered G/S, namely in Class 3: ‘Substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps; cleaners and fragrances for carpet, flooring, upholstery and window treatments’; Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines, power-operated water extractors, and parts and attachments thereof’; Class 37: ‘Repair; installation services; repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors; consultation services in the field of repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors’, claiming that that mark had been registered contrary to the provisions of Article 7(1)(b) and (c) of Regulation No 207/2009.
The Board of Appeal fully approved and endorsed the Cancellation Division’s reasoning that the mark WET DUST CAN’T FLY possessed both originality and resonance, and also had the effect of setting off a cognitive process in the mind of the relevant consumer. The expression ‘wet dust can’t fly’ was fanciful and distinctive and was not descriptive of the goods and services concerned.
The General Court rejected the appeal and agreed with OHIM that the expression ‘wet dust can’t fly’ does not consist of the terms ‘dust moistener’ or ‘dust dampener’, which might have been perceived as descriptive of the intended purpose of such goods. Furthermore, it is clear that that expression cannot be understood as a conventional way of describing the functionalities of cleaning appliances and cleaning tools. Consequently, it is not necessary to ensure that that expression is made available to competitors. Thus the Court confirmed there was no violation of Article 7 (1) c) CTMR.
As regards the argument of breach of article 7 (1) b) CTMR, the cancellation applicant did not produce any document to establish that the combination of the words ‘dust’ and ‘wet’ is commonly used in the context of filters and cleaning systems.
Furthermore, the concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character. Finally, with regard to the applicant’s argument that that expression is an advertising slogan which indicates that the performance of the designated products is better than the performance of other products, although the slogan is slightly suggestive, there is no evidence to support the specific assumption that those goods and services are superior.