TINYPHONES | Decision 444/2016-5

Date Published: May 1, 2018

DECISION

of the Fifth Board of Appeal

of 12 January 2017

In Case R 444/2016-5

JVC Kenwood Corporation
3-12, Moriyacho, Kanagawa-ku, Yokohama-Shi Kanagawa  221-0022 Japan	Applicant / Appellant

represented by J A KEMP, 14 South Square Gray's Inn, London WC1R 5JJ, United Kingdom

APPEAL relating to European Union trade mark application No 14 533 764

THE FIFTH BOARD OF APPEAL

composed of A. Szanyi Felkl 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 Fifth Board’s Resolution No 1 of 2 February 2015 on decisions by a single Member

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application filed on 7 September 2015, JVC KENWOOD CORPORATION (‘the applicant’) sought to register the figurative mark

 

for the following list of goods:

Class 9 – Apparatus for recording, transmission or reproduction of sound or images; headphones; earphones; headsets for mobile phones; headsets for computers

2. On 27 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), (c) in conjunction with Article 7(2) EUTMR, in respect of all of the goods. Its main arguments may be summarised as follows:

• The objectionable goods are every day consumption/mass consumption goods, mainly aimed at the average consumers. The attention of the public is that of the average consumer reasonably well-informed and reasonably observant and circumspect.
• As the mark is made up of English words the relevant public is the English-speaking public in the Community.
• The mark is made up of the words ‘TINYPHONES’, with the following meanings: ‘TINY’: very small and ‘PHONES’: (informal) headphones or earphones. The relevant consumer will understand the words ‘TINYPHONES’ as a meaningful expression signifying very small headphones or earphones.
• The mark immediately inform consumers without further reflection that the goods applied for are headphones or earphones which are very small in size.
• The mark consists of an expression which, notwithstanding certain stylised elements and the fact that the two words are conjoined, conveys obvious and direct information regarding the kind of goods in question. Thus, it is descriptive.
• The sign’s descriptiveness would also eclipse any impression that the mark could indicate a trade origin.

3. On 14 December 2015, the applicant responded to the provisional refusal stating that:

• The word ‘TINY’ in English is rather used to describe something ‘minute’, ‘minuscule’ or even ‘microscopic’; thus, its use in relation to the goods in question is highly unusual. The same applies to the word ‘phones’, which is a highly unusual abbreviation, not commonly used by English-speaking consumers, and it would rather mean ‘telephones’.
• When considered as a whole, the mark will be perceived as a surprising combination of unusual terms, which is inherently distinctive in the context of the goods applied for.
• The mark’s stylisation, when considered in conjunction with the unusual and surprising nature of the sign, confers an additional element of distinctiveness.

4. On 20 January 2016, the examiner took a decision (‘the contested decision’) entirely refusing the trade mark applied for in regard to all of the goods. Its additional arguments may be summarised as follows:

• The conjoining of two descriptive words does not automatically confer a distinctive character to the overall expression. The English-speaking public will immediately perceive the two words of the sign ‘TINYPHONES’, making an instinctive dissection of the whole expression.
• The distinctive character of the mark must be examined as a whole. However, this is not incompatible with the examination of the sign’s individual components.
• The expression ‘TINYPHONES’ immediately informs consumers without further reflection that the contested goods are very small headphones/earphones.
• The degree of stylisation of the sign is not sufficient to overcome its descriptiveness.

5. On 7 March 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 received on 11 May 2016.

Grounds of appeal

6. The arguments raised in the statement of grounds may be summarised as follows:

• The application should be assessed in relation to the goods for which protection is sought.
• The definition of a word given in a dictionary is not in fact the way in which it is ordinarily understood by the relevant public.
• The Office has not correctly applied the ordinary understanding of the relevant public of the terms ‘TINY’ and ‘PHONES’ and has failed to take into account the supporting documents and arguments submitted by the applicant.
• With regard to the term ‘TINY’, the applicant argues that the word is understood to mean something that is very much out of the ordinary in terms of its size.  It filed various examples to support this argument.  
• The word ‘TINY’ would not be used in relation to the applied for goods.  
• The ordinary understanding of the word ‘PHONES’ is simply ‘telephones’ and as such it has no meaning in relation to the applied for headphones/earphones.  Various internet extracts have been filed in support of this argument.
• An identical application has been accepted by the USPTO.
• The applicant has filed evidence demonstrating that it has acquired distinctive character by virtue of the use made of the mark.  (The evidence shall be assessed in this decision).

Reasons

7. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
8. The appeal is, however, unfounded.  The EUTM designation is excluded from registration for all the contested goods (see paragraph 1 above), for the reasons explained below.
9. Pursuant to Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character, meaning that they are not capable of distinguishing the goods of one undertaking from those of another, shall be refused registration. The trade mark must, in particular, be capable of serving as an indication of origin. This means that the trade mark must make it possible to distinguish the goods by their business origin, not by their kind, composition or components.
10. According to Article 7(1)(c) EUTMR, no undertaking may be granted the exclusive right to use in trade a sign which merely describes, in a normal linguistic form, the kind, quality or other characteristics of the goods for which it is claimed.
11. The absolute grounds for refusal pursuant to both Article 7(1)(b) and (c) EUTMR are to be assessed with regard to the goods and services claimed. The perception of the relevant public, namely the consumers of said goods and services is decisive. For assessment purposes, the trade mark is to be considered in its entirety, even if its individual elements are considered to be objectionable.

The targeted public and territory

12. The goods in question are: ‘apparatus for recording, transmission or reproduction of sound or images; headphones; earphones; headsets for mobile phones; headsets for computers’ in Class 9.
13. The target public for these goods will generally be the average end consumer but also the professional public who purchase the goods for professional/business purposes.  Accordingly, the level of care and attention of the average end consumer will be average, i.e. they will be reasonably well-informed and reasonable observant and circumspect. The level of attention, as regards the professional public, will be elevated.
14. Pursuant to Article 7(2) EUTMR, a sign shall not be registered if it is ineligible for protection with regard to only part of the European Union. As the trade mark applied for is an expression made up of an English word, account must be taken of the public in the English-speaking territory of the European Union, namely at least in the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Article 7(1)(c) EUTMR, the descriptive nature of the sign

15. Under Article 7(1)(c) EUTMR, 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 shall not be registered. Thus Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications which describe the categories of goods or services in respect of which registration is applied for remain available. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 24-25, 08.04.2003, C-53/01, C-54/01 & C 55/01, Linde, EU:C:2003:20606.05.2003, C-104/01, Libertel, EU:C:2003:24412.02.2004, C-265/00, Biomild, EU:C:2004:87).
16. The signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquired the goods or service designated by the mark 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 (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; and 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 28).
17. Consequently, for a sign to fall within the scope of the prohibition of that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40 upheld on appeal by 05/02/2004 C-150/02 P, Streamserve, EU:C:2004:75, 22.06.2005, T-19/04, Paperlab, EU:T:2005:247, § 25).
18. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).
19. A trade mark consisting of a neologism or a word 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 Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or 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. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (07/07/2011, T 208/10, Truewhite, EU:T:2011:340, § 16).
20. The Operations Department refused the application on the basis that it is composed of two English words which are likely to be perceived as descriptive in relation to the goods claimed.  ‘TINY’ indicates that the goods are very small in size and ‘PHONES; informs the consumer that the products in question are headphones.  
21. The applicant argues that the application should be assessed in relation to the goods for which protection is sought and that the dictionary definition is not in fact the way in which some words would be understood. The Operations Department found that ‘TINY’ would be understood as meaning ‘very small’.  The applicant argues that it means something out of the ordinary. In other words, something that is extraordinarily small.  To support of this argument the applicant has various definitions of the word ‘TINY’. These have been taken into consideration.    
22. Still, the Board is of the view that the Operations Department’s understanding that the relevant consumers will view the word ‘TINY’ as being very small is correct.  The word is commonly used and instantly recognisable as being something that is extremely small.  The English speaking consumer would not view it as being something extraordinary and therefore distinctive for the goods in question.  The average consumer will merely see it as a reference to small items, when used in relation to all of the goods applied for.  
23. The applicant also argues that the ordinary understating of the word PHONES is ‘telephones’. Therefore it has no meaning in relation to the applied for headphones/earphones.  To support this view the applicant has filed numerous internet search results for the word phone. These have been taken into consideration by the Board.  It is acknowledged that the abbreviation ‘PHONES’ is typically used for telephones.  However, it is unequivocally clear to the Board that when the relevant consumer sees ‘PHONES’ on ‘headphones; earphones; headsets for mobile phones; headsets for computers’ it may very well view it also as an abbreviation for the aforementioned goods.  
24. When ‘PHONES’ is used with the adjective ‘TINY’ it would, without further thought or mental effort, be recognised as describing the size of the goods.  
25. As already acknowledged by the applicant, the abbreviated term ‘PHONES’ is used simply to describe ‘telephones’.  Since the broad specification, ‘apparatus for recoding, transmission or reproduction of sound or images’ covers mobile telephones, the sign applied for as a whole will instantly be recognised as describing a very small version of any of those goods.
26. The applicant preys in aid of the US Patent and Trade Mark Office’s acceptance of an identical application for identical goods.  The Board can only rely on the relevant case law of the ECJ. The US has its own trade mark law and jurisprudence concerning the registration of trade marks, which cannot be compared or applied to EUTM applications. The EU trade mark regime is an autonomous system and the legality of the decisions of the Boards must be assessed solely on the basis of the EUTMR as interpreted by the EU courts (judgments 05/12/2000, T-32/00, Electronica, EU:T:2000:283, § 47, and 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 66), and not on the basis of prior national registrations in other countries, regardless of how comparable the application may be.
27. To conclude, the Board maintains the Operations Department’s view that the application is objectionable under Article 7(1)(c) in conjunction with Article 7(2) EUTMR.

Article 7(1)(b) and 7(2) EUTMR

28. Each of the grounds for refusal listed in Article 7(1) EUTMR are independent of the others and calls for a separate examination (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 39; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). Furthermore, the various grounds for refusal must be interpreted in light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue (29/04/2004, C-456/01 P & C-457/01 P, Tabs, EU:C:2004:258, § 45-46; 02/07/2002, T-323/00, SAT.2, EU:T:2002:172, § 25).
29. Each of the absolute grounds for refusal connected with lack of distinctiveness, descriptiveness and customary usage has its own sphere of application and they are neither interdependent nor mutually exclusive (29/04/2004, C-456/01 P & C-457/01 P, Tabs, EU:C:2004:258, § 45-46). Even if those grounds are applicable separately, they may also be applied cumulatively.
30. According to settled case-law, the marks referred to in Article 7(1)(b) EUTMR are those which are regarded as 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 covered by the mark 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 (29/09/2009, T-139/08, Smiley, EU:T:2009:364, § 14).
31. As outlined above, the application is a descriptive expression which merely describes a characteristic of the goods, i.e. the sign applied for as a whole will instantly be recognised as describing very small versions of any of those goods. It thus cannot function as a commercial identification as regards the goods at issue.
32. In view of the above, the Board concludes that the application is ineligible for registration also pursuant to Article 7(1)(b) EUTMR for all of the applied for goods.

Distinctiveness acquired through use, pursuant to Article 7(3) EUTMR

33. The applicant has submitted a witness statement and evidence which it claims prove that the application has acquired distinctive character by virtue of the use made of it.  
34. The witness statement is from Ryo Saito, the Trademark and Design Group Manager, of the applicant.  It is a position he has held since 1 July 2014.  Mr Saito claims that the mark TINYPHONES has been used since 2011 in at least 20 EU member states, including the United Kingdom, Ireland and Malta.  Mr Saito provides a breakdown of the number of goods being sold under the application in the EU as follows:

Period	No. Sold	Approx. Value in EUR
August 2011 – March 2012	27,900	323,000
April 2012 – March 2013	136,100	1,257,000
April 2012 – March 2014	207,400	1,980,000
April 2013 – March 2015	256,900	2,316,000
April 2015 – December 2015	223,900	1,991,000

35. In support of the sales figures above Mr Saito provided a number of invoices.  He also states that the products are sold in major retailers such as Argos, Dixons, Currys, Asda, Tesco and Sainsburys.  
36. Under Article 7(3) EUTMR, the absolute ground for refusal referred to in Article 7(1)(b) EUTMR does not prevent registration of a mark if that mark has become distinctive in relation to the goods for which registration is sought by virtue of the use made of it.
37. First of all, the Board notes that the proof of distinctive character acquired through use is different from that establishing a reputation under Article 8(5) EUTMR and that demonstrating that the trade mark has been put to genuine use (21/04/2015, T-359/12, Device of a chequered pattern (maroon & beige), EU:T:2015:215, § 119).
38. The acquisition of a distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods concerned as originating from a particular undertaking because of the mark (01/02/2013, T-104/11, Perle', EU:T:2013:51, § 37, 22/03/2013, T-409/10, Borsa, EU:T:2013:148, § 75 and 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 61).
39. The matters capable of demonstrating that the mark has come to identify the product or service concerned as originating from a particular undertaking must be assessed globally. In the context of that assessment, the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify the goods or service as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 49 and 51 and 07/07/2005, C-353/03, Have a break, EU:C:2005:432, § 31).
40. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies the goods or service as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is fulfilled (10/12/2008, T-365/06, BATEAUX MOUCHES, EU:T:2008:559, § 35 and the case-law cited).
41. In order to assess whether the grounds for refusal laid down in Article 7(1)(b) to (d) of EUTMR must be disregarded because of the acquisition of distinctive character through use, only the situation prevailing in the part of the territory of the Union where the grounds for refusal have been noted is relevant (10/12/2008, T-365/06, BATEAUX MOUCHES, EU:T:2008:559, § 36 and the case-law cited).
42. It is clear from the evidence provided that the applicant has not demonstrated that it has acquired distinctive character by virtue of the use made of it.  The application has only been used since 2011 and the level of sales are not close to those you would expect to see if the mark had acquired a distinctive character.  There is no breakdown of how the turnover figures relate to the individual goods and there is no indication on how much was spent on advertising the goods, and the geographical extent thereof.  There is absolutely no information as regards the perception of the sign by the relevant public.
43. Therefore, this is not a borderline case and the Board has no hesitation in concluding that the applicant has failed to demonstrate that it has acquired a distinctive character.

Conclusion

44. To conclude, the contested decision is confirmed.  The application is refused under Articles 7(1)(b) and (c) in conjunction with 7(2).  Further, the claim under Article 7(3) is dismissed.

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Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema