CAMSAFE | Decision 860/2016-2
Date Published: May 16, 2018
of the Second Board of Appeal
of 16 January 2017
In Case R 1860/2016-2
MRM HK Limited
Flat A, 15th floor, Cheung Fat Industrial Building, 7-9 Hill Road, Western district
The Hong Kong Special Administrative Region of The People's Republic of China
Applicant / Appellant
represented by Nicolas Magrez, 22 Groenstraat, 1950 Brussels, Belgium
APPEAL relating to European Union trade mark application No 15 311 509
THE SECOND BOARD OF APPEAL
composed of H. Salmi 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
Summary of the facts
- By an application filed on 5 April 2016, MRM HK Limited (hereinafter ‘the applicant’) sought to register the word mark
for the following list of goods:
Class 9 - Bags adapted for electronic agendas; bags adapted for electronic tablet; bags adapted for laptops; bags adapted for notebook computers; bags adapted for tablet computer; bags adapted to carry video apparatus; bags for cameras; bags for photographic equipment; camera cases; camera straps; carrying cases for portable electronic devices; cases adapted for computers; cases especially made for photographic apparatus and instruments; cases for electronic agendas; cases for electronic tablet; cases for mobile phones; cases for notebook computers; cases for tablet computer; cell phone straps; laptop carrying cases; leather cases for mobile phones; mobile phone straps.
- On 20 May 2016, 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) and (c) in conjunction with Article 7(2) EUTMR, in respect of all of the goods. She stated in essence the following:
- The mark applied for is considered objectionable for all the goods claimed which are mass- produced goods and are aimed at average consumers as well as professional consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect and will be high in the case of the professional consumer. Moreover, since the mark ‘CAMSAFE’ consists of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union.
- The Trade mark consists of the words ‘cam, and ‘safe’ with the following meanings:
Informal A Camera
2.1 (Of a place) affording security or protection: put it in a safe place.
Online Oxford English dictionary
- The relevant consumer will understand the words ‘CAMSAFE’ as a meaningful expression: ‘not likely to cause harm to a camera’.
- Taken as a whole, the words ‘CAMSAFE’ immediately inform consumers without further reflection that the goods applied for are for protecting the cameras of the applicant, as well as the goods which can contain a camera. Therefore, the mark conveys obvious and direct information regarding the purpose and quality of the goods in question.
- It follows that the link between the words ‘CAMSAFE’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.
- Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.
- Furthermore, for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods.
- The relevant public would perceive the expression CAMSAFE as a promotional laudatory message, the function of which is to describe a characteristic of the goods. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that they protect cameras from damage.
- There is nothing about the expression CAMSAFE that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question.
- Consequently, taken as a whole, the mark applied for ‘CAMSAFE’ is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.
- On 15 July 2016, the applicant responded to the provisional refusal stating, that:
- The use of one word ‘CAMSAFE’ instead of the separate words ‘CAM’ and ‘SAFE’ has a strong impact on the consumer’s perception of the sign particularly as these two words are never used as a one-word combination in English.
- ‘CAMSAFE’ diverges from English grammar rules. Even though the words ‘cam’ and ‘safe’ are meaningful, they are used in an unconventional way which confers distinctiveness on the sign and is unlikely to be understood by the relevant consumer. The applicant refers to judgment of 20/09/2001, C383/99 P, BABY-DRY, EU:C:2001:461, § 40-44 in support of its arguments.
- A Google search of ‘CAMSAFE’ only shows the applicant’s products.
- No other competitors or companies are likely to use the combination ‘CAMSAFE’.
- The mark has been accepted in the United States and China.
- The applicant has developed a family of marks ending in ‘SAFE’, many of which are registered in various countries.
- If the objection is maintained, the applicant suggests deleting products which may be related to the word ‘camera’.
- On 15 August 2016, the examiner took a decision (hereinafter ‘the contested decision’) entirely refusing the trade mark applied for. It can be summarised as follows:
- The Office does not consider that the fact that the words ‘cam’ and ‘safe’ are written as one will have a strong impact on the consumer but is of the opinion that the lack of a space between the words will hardly be noticed.
- Furthermore, it is not agreed that ‘CAMSAFE’ diverges from English grammar rules. The term ‘CAMSAFE’ is made up of two understandable words which form a compound adjective meaning ‘not likely to cause harm to a camera’. This type of construction is seen in the commonly used words ‘childsafe’ and ‘babysafe’ indicating ‘not likely to cause harm to a child or baby’.
- The Office does not consider the BABY-DRY mark to be comparable to the mark at hand and points to 26/02/2014, R 1972/2013-5, BABY-SAFE, § 11 in this respect.
- In reply to the applicant’s argument that the combination ‘CAMSAFE’ is not in use in a generic sense reference is made to 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32.
- Furthermore, regarding the applicant’s argument that the combination ‘CAMSAFE’ is only used by the applicant, it is pointed out that the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … the lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T320/03, Live richly, EU:T:2005:325, § 88).
- As regards the applicant’s argument that third parties, and more particularly its competitors, are not likely to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 39).
- Regarding the national decisions referred to by the applicant, according to case-law the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.
- The fact that the applicant has a family of marks ending in ‘SAFE’ does not endow the mark at hand with distinctiveness, which must be assessed on its own merits.
- The suggested amendment of the specification would not overcome the objections raised as all the electronic goods mentioned in the specification are either cameras themselves or can incorporate cameras and the term ‘CAMSAFE’ is descriptive in respect of all the goods listed which have the purpose of protecting a camera whether or not this is incorporated in another electronic item such as an electronic tablet.
- As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR.
- Furthermore, there is nothing about the expression ‘CAMSAFE’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question.
- On 11 October 2016, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was also received on 11 October 2016 together with the notice of appeal.
Grounds of appeal
- The arguments raised in the statement of grounds may be summarised as follows:
- Taken as a whole, the word trademark ‘CAMSAFE’ is not descriptive and has a distinctive character. The word ‘CAMSAFE’ does not exist in the English language and is therefore a neologism. It is not used as such to describe the characteristics of any goods and it does not have any meaning for the relevant consumer. There is furthermore no English expression using the abbreviation ‘CAM’ and the word ‘SAFE’ in the same order as in the trademark ‘CAMSAFE’.
- The order of the words in the combination ‘CAMSAFE’ does not comply with the English grammar rules since the substantive is placed before the adjective. This unusual disposition is likely to have an impact on the meaning of such combination.
- The word ‘CAMSAFE’ will therefore not be perceived directly as providing information as to the characteristics of the goods at issue. It will thus not enable the public concerned to perceive, without further thought, a description of the goods in question or one of their characteristics. Furthermore, the assertion according to which the words ‘childsafe’ and ‘babysafe’ are commonly used in order to indicate ‘not likely to cause harm to a child or baby’ is unsubstantiated.
- The contested decision does not challenge that the word combination ‘CAMSAFE’ is not currently used in a descriptive manner in relation to the goods at issue, it does not explain how such sign would be likely to be used in the future, in normal usage from the point of view of the relevant public, to describe some characteristics of the goods at issue.
- This is contrary to the case-law which requires that, in order to determine whether a trademark may be used in the future to designate the characteristics of some goods, such analysis must be based on an actual and current, or at least a very probable and sufficiently close in time, market experience or at least a very probable and sufficiently close to us in time.
- In the case at hand, there is no reason to believe that the word ‘CAMSAFE’ would probably be used by the relevant public in order to designate some characteristics of the goods at issue.
- It results indeed from settled case-law that the existence of a ‘family’ or a ‘series’ of trade marks is an element which must be taken into account for the purposes of assessing the likelihood of confusion. In those circumstances, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and may consider, erroneously, that that trade mark is part of that family or series of marks. Therefore, the existence of a ‘family’ or ‘series’ of trademarks will allow the consumer to identify more easily the goods as coming from the same company as those sold under the trademarks from the same ‘family’. The existence of a ‘family’ is therefore likely to increase the distinctiveness of a trademark, and this circumstance should therefore be taken into account when assessing the distinctive character of a trademark.
- The applicant had introduced in its letter dated 15 July 2016 a subsidiary demand, namely, if the examiner were to maintain her position as to the descriptive character of the trademark ‘CAMSAFE’, to delete any products that might be deemed as being related to the word ‘Camera’ (as the examiner interpreted the sign ‘CAMSAFE’ as meaning ‘not likely to cause harm to a camera’). This subsidiary demand was however rejected in the decision at issue since it would not overcome the objections raised.
- The applicant deems that such refusal is ill-founded because there is no direct and specific relationship between the sign ‘CAMSAFE’ and the goods in question that would allow the public concerned immediately to perceive, without further thought, a description of the goods. Indeed, the relationship is very remote between the expression ’not likely to cause harm to a camera‘ and the goods as mentioned in the amended description, and the public will thus not directly and without further thinking associate the word ‘CAMSAFE’ with goods which are not as such cameras but which might eventually contain a camera. This is all the more the case concerning goods which are not likely to contain a camera (such as electronic agendas).
- The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
Article 7(1)(c) EUTMR
- Article 7(1)(c) EUTMR provides that ‘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 service’ must not be registered.
- According to the case-law, Article 7(1)(c) EUTMR prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (23/10/2003, C191/01 P, Doublemint, EU:C:2003:579, § 31, and 27/02/2002, T219/00, Ellos, EU:T:2002:44, § 27; see also 15/07/2015, T611/13, HOT, EU:T:2015:492, § 33 and the case-law cited).
- Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, pursuant to Article 7(1)(c) EUTMR, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (23/10/2003, C191/01 P, Doublemint, EU:C:2003:579, § 30; see, also, 15/07/2015, T611/13, HOT, EU:T:2015:492, § 34 and the case-law cited).
- It follows that for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (15/07/2015, T611/13, HOT, EU:T:2015:492, § 35 and the case-law cited).
- A sign’s descriptiveness can be assessed only by reference to the way in which it is understood by the relevant public and to the goods or services concerned (07/06/2005, T316/03, MunichFinancialServices, EU:T:2005:201, § 26 and the case-law cited, and 15/07/2015, T611/13, HOT, EU:T:2015:492, § 36 and the case-law cited). The Board concurs with the contested decision’s finding – which is undisputed – that the goods in question are mass produced goods and are aimed at average consumers as well as professional consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect and will be high in the case of the professional consumer.
- However, the Board of Appeal recalls that, 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. On the contrary, terms that may not be fully clear to consumers of inexpensive mass consumer goods [services] can be immediately clear to a professional audience, particularly if the mark consists of words related to the field in which this specialised audience is active (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 27-28).
- In the present case, the examiner correctly considered that the mark at stake consists of two readily identifiable English words, namely ‘CAM’, as an informal word for ‘camera’, and ‘SAFE’. In light thereof, the examination of the absolute grounds for refusal must be based on the English-speaking public in the European Union. The Board will do the same and will consider that the public by reference to whom the absolute ground of refusal must be assessed consists of at least the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom. The Board will limit its assessment to these Member States and will refrain at this stage from considering the English language knowledge of the relevant public and/or the common use of the individual words in the various other Member States.
- In the case of compound word signs, the relevant meaning, established on the basis of all their constituent elements and not only one of them, must be taken into account. Thus, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, in any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character. In other words, in order to assess whether or not a trade mark lacks distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not start by examining each of the individual features which make up that mark. 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 (06/06/2013, T515/11, Innovation for the real world, EU:T:2013:300, § 29 and the case-law cited).
- The mark applied for consists of a combination of the words ‘CAM’ and ‘SAFE’. The contested decision found that the mark applied for as a whole will be understood by the relevant consumer as a meaningful expression:’ not likely to cause harm to a camera’.
- The Board notes that the meaning in English of the two words of which the mark applied for consists can easily be ascertained on the basis of dictionaries, such as the Online Oxford English Dictionary, which was used by the examiner. The Board confirms the undisputed meanings of the individual words ‘CAM’ and ‘SAFE’ as provided in the contested decision.
- As to the combination ‘CAMSAFE’, the Board notes that a trade mark consisting of a word or neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the word or neologism and the mere sum of its parts: that assumes either that, because of the unusual nature of the combination in relation to the goods or services, the word creates an 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 or that the word or neologism has become a part of everyday language and has acquired a meaning of its own, with the result that it is now independent of its component parts (25/02/2010, C408/08 P, Color Edition, EU:C:2010:92, § 61 and 62 and case-law cited therein).
- The Board does not consider that the combination ‘CAMSAFE’ is more than the sum of its parts. Indeed the Board finds that the expression ‘CAMSAFE’, taken as a whole, immediately informs consumers without further reflection that the contested goods in Class 9 are for protecting cameras as far as concerns ‘bags adapted to carry video apparatus; bags for cameras; bags for photographic equipment; camera cases; camera straps; and cases especially made for photographic apparatus and instruments’, as well as for protecting goods which contain or may contain a camera, such as the ‘bags adapted for electronic agendas; bags adapted for electronic tablet; bags adapted for laptops; bags adapted for notebook computers; bags adapted for tablet computer; carrying cases for portable electronic devices; cases adapted for computers; cases for electronic agendas; cases for electronic tablet; cases for mobile phones; cases for notebook computers; cases for tablet computer; cell phone straps; laptop carrying cases; leather cases for mobile phones and mobile phone straps’. It is reasonable to believe that the relevant consumers do not require a high degree of sophistication to make a sufficiently clear link between the mark and the goods and therefore to perceive the descriptive message of the mark. Indeed, the mark not only directly embodies a sensible meaning in relation to the goods in question; it is a word that might profitably be employed for such goods. It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T367/02 - T369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3).
- As to the combination of the words ‘CAM’ and ‘SAFE’ in the contested mark, it is common in English to create words by coupling together two words each of which has a meaning. Furthermore, coupling the words ‘CAMSAFE’ together without spacing or a hyphen complies with English lexical rules and rules on syntax. Lastly, the absence of a hyphen or a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s products from those of other undertakings (13/11/2008, T346/07, Easycover, EU:T:2008:496, § 52 and case-law cited therein).
- In light of the foregoing, there is nothing subtle, indirect, concealed or vague, about the message conveyed by the mark. For the English-speaking consumer the expression in relation to the contested goods will clearly be understood as a reference to the fact that the products will help keep the camera safe, without the relevant public being required to undertake any mental steps, in order to ascertain the meaning of the mark applied for. As a result, the descriptive meaning of the expression, describing a characteristic of the goods, will be immediately perceived by the relevant public.
- That conclusion cannot be altered by the applicant’s mere assertions that it exclusively uses the expression on the market, that the expression does not exist in everyday or technical language, that it is not listed in dictionaries and that it could have other meanings. It should be recalled that a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. Therefore, it is not necessary, in order for EUIPO to refuse such a registration, that the sign in question should actually be in use in a way that is descriptive, but merely that it could be used for such purposes (23/10/2003, C191/01 P, Doublemint, EU:C:2003:579, § 32). Nor is there a requirement that the expression must be listed in dictionaries for it to be refused protection pursuant to Article 7(1)(c) EUTMR. It is further recalled that it suffices for the mark applied for to fall foul of Article 7(1)(c) EUTMR where it describes a characteristic of the goods concerned such as in present case.
- In light of the above, the message of the mark applied for, taken as a whole, is meaningful in respect of all of the contested goods, and consequently, the Board does not find that the contested decision has erred in finding that the mark taken as whole is descriptive in the sense of Article 7(1)(c) EUTMR in relation to the contested goods.
- It follows that the mark applied for is objectionable on the basis of Article 7(1)(c) EUTMR for all of the contested goods.
Article 7(1)(b) EUTMR
- It is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the Board shares the contested decision’s finding that the sign applied for also lacks distinctiveness in respect of the goods concerned for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a word mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C363/99, Postkantoor, EU:C:2004:86, § 86, and 14/06/2007, T207/06, Europig, EU:T:2007:179, § 47 and the caselaw cited therein).
- A mark which, as in the case at hand, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the marked goods to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 03/07/2003, T122/01, Best Buy, EU:T:2003:183, § 20).
- The English-speaking public in the EU will not see the mark as a badge of a particular trade origin for the goods at issue, but as a descriptive term and an obvious laudatory expression, as the contested decision correctly holds.
- Insofar as the applicant alleges that it has registered ‘CAMSAFE’ marks in the United States of America and China, that argument must be rejected as irrelevant as those registrations were effected on the basis of different legislation. It suffices to point out, in that regard, that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Accordingly, the registrability of a sign as a European Union trade mark is to be assessed on the basis of relevant EU legislation alone (24/01/2008, T88/06, Safety 1st, EU:T:2008:15, § 45 and the case-law cited therein).
- Insofar as the applicant cites other signs that have been accepted by the Office containing the word ‘SAFE’, 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. 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) and/or 7(1)(c) EUTMR, it cannot decide otherwise simply because an equally non-distinctive mark has been registered in the past. It is further noted that the examples of trade mark registrations submitted typically appear only to have one word in common with the mark applied for.
- Further, it must be noted that decisions concerning the registration of a sign as a European Union trade mark which the Office, including 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, and notwithstanding the importance of the principles of equal treatment and the principles of sound administration, the legality of those decisions must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (10/03/2011, C51/10 P, 1000, EU:C:2011:139, § 73 to 75 and 16/07/2009, C202/08 P & C208/08 P, RW feuille d’érable, EU:C:2009:477, § 57 and the case-law cited therein).
- Moreover, comparable precedents have to concern cases which the Boards have had the opportunity to decide upon. The Board cannot be bound by decisions of the Examination Division which have not been appealed (see, with respect to Opposition Division decisions, 27/03/2014, T554/12, Aava Mobile, EU:T:2014:158, § 65, second sentence) and which lack any apparent motivation in their findings as to the accepted distinctive character of the contested mark (contrary to a refusal on absolute grounds of refusal).
- Further, it should be noted that insofar as the Courts have had the opportunity to decide on the distinctiveness of ‘SAFE’ marks, the General Court has refused marks such as ‘FoodSafe’ for goods in Class 2 (23/11/2015, T766/14, FoodSafe, EU:T:2015:913, confirmed by the Court of Justice in 24/05/2016, C-63/16 P, FoodSafe, EU:C:2016:348) and ‘ALLSAFE’ for goods and services in Classes 6, 12, 22, 35, 39 and 42 (25/03/2009, T343/07, Allsafe, EU:T:2009:84). Insofar as the Boards have had the opportunity to decide on the distinctiveness of ‘SAFE’ marks, the Board has recently refused marks such as ‘SAFESEAL’ for goods in Class 7 (14/07/2016, R 2498/2015-5), ‘MICROSAFE’ for goods in Class 21 (05/04/2016, R 1312/2015-4), ‘SAFESET’ for goods in Class 10 (18/03/2015, R 2388/2014-1), ‘Flexsafe’ for goods in Class 10 (11/09/2014, R 1065/2014-1), ‘BABY-SAFE’ for goods in Classes 12 and 20 (26/02/2014, R 1972/2013-5) and ‘MOBILESAFE’ for goods in Class 9 (03/07/2013, R 1248/2012-2) amongst many others.
- The Board also notes that insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (10/03/2011, C51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited therein).
- For reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited therein).
Family of marks
- Finally, the applicant’s argument concerning a supposed ‘family of trade marks’ or ‘series of marks’ ending with the word ‘SAFE’ is entirely misconceived.
- Firstly, the case-law in this respect relates to Article 8 EUTMR and in particular the likelihood of confusion, and not to Article 7 EUTMR.
- Secondly, even if an applicant were to prove the existence of a ‘family’ of marks, distinctive character falls to be determined by the perception of the relevant public in relation to the sign at hand in conjunction with the relevant goods and services, that distinctive character being either intrinsic or as a result of the use which has been made of the said sign (and not of others) in accordance with Article 7(3) EUTMR, which has not been claimed or proven in the current proceedings (31/08/2016, R 634/2016-2, EASYFLY, § 40-42).
- To conclude, it has become apparent that the mark applied for falls within the scope of the grounds for refusal set out in Article 7(1)(b) and 7(1)(c) EUTMR because of the goods in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant consumer.
- The appeal is dismissed.
On those grounds,
Dismisses the appeal.
16/01/2017, R 1860/2016-2, CAMSAFE