Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 09/12/2015

Locke Lord (UK) LLP

201 Bishopsgate

London EC2M 3AB

REINO UNIDO

Application No:	012717823
Your reference:	306187-7219/PFA/TG
Trade mark:
Mark type:	Figurative mark
Applicant:	Apple Inc. 1 Infinite Loop Cupertino California 95014-2084 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07 July 2014 pursuant to Article 7(1)(b) CTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter. The applicant was given an extended deadline of 07 December 2014 and was then granted an extension of that deadline to 07 February 2015, which was itself extended to 7 April 2015. The applicant furnished observations and evidence dated 02/04/2015 and 07/04/2015 ( all of which was subject to the original caveat by letter dated 08/12/2014, that any further opportunities to file additional evidence would only be granted if the situation looked favourable to the applicant), and was informed that any further extension requests would be refused.

Having considered all of the submissions filed by the applicant to date including the contents of the witness statement of Thomas R. La Perle, together with the exhibits thereto, which evidence the existence and the promotion of the applicant´s apps and its products, and which attest to the considerable profile of the applicant itself, the Office finds that the application should be refused, and that the applicant was afforded enough opportunities to furnish appropriate evidence and submissions.

The Applicant furnished submissions by 7 April 2015 which further consist of:

• 31 pages (101 paragraphs) of counterarguments, including further statements about the success of the applicant and the traffic of its website in Europe together with annexes of screenshots from websites (mainly the applicant´s), an extract from an academic paper, instructional and promotional material.

The main arguments are:

1. The application mark is a carefully designed logo.

2. The Office misinterpreted the target consumers.

3. The relevant public perceives icons on touchscreen mobile devices as indicators of trade origin.

4. The relevant case law consists essentially and especially of C-398/08, T-128/01 and C-329/02P.

5. Relevance to the goods.

6. The sign was accepted without difficulties in other jurisdictions.

7. The Office has already accepted similar marks.

8. The sign has acquired distinctiveness through use.

• Decision

Pursuant to Article 75 CTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments and after having studied all the evidence submitted, the Office has decided to maintain the objection and to refuse the application for all of the goods except the following goods in respect of which the Office waives its objection dated 07/07/2015 based on absolute grounds:

Class 9: fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; whistle alarms; sunglasses; animated cartoons; egg-candlers; dog whistles; decorative magnets; electrified fences; electrically heated socks.

• Comment of the Office on the counterarguments (article 7(1)(b) lacking distinctiveness)

1. The application mark is a carefully designed logo.

The Office is convinced of the fact that everything the applicant does is carefully designed. At no stage in the proceedings did the Office question the design of the pictograms or the devices in which they are used. Nevertheless, slick design is not the sole remit of the applicant, particularly in the market of technological or electronic goods, where it would be unusual to perceive graphics rendered without a level of aesthetic concern or elegance. The question whether those graphics are perceived as a badge of origin of a commercial entity, or as a badge of information which is not indicative of a trade source, is dependent on the message which is capable of being conveyed by that image as a whole and perceived by the consumer. The Office and the applicant are in complete agreement that simple stylised figurative signs are commonly used in the software industry and in relation to icons or apps, but the average consumer will not perceive the trade source of a purely descriptive icon such as a simple bar graph in the absence of some other identifying information such as the “G” for Google or the apple symbol or an invented word, particularly where there is nothing vague or allusive about the image on display. For this reason, even carefully designed logos which are a norm in the sector and not a departure, are often incapable of being inherently distinctive.

2. The Office misinterpreted the target consumers.

Computer goods are purchased by average consumers: Just ordinary people who want to have modern communication devices, because everyone nowadays owns one. Their level of attention is perhaps somewhat higher than average, but by no means are they fussy and demanding consumers, obsessed with each and every detail. Touchscreens are an essential and integral part of many computer devices for example, and have been a feature of these kinds of technological goods for some time now. The Office does not agree that a simple icon featuring the silhouette of a bar graph in green will be perceived as anything other than a badge of information, or an illustration of a function regardless of the level of attention of the consumer. If anything, consumers today are inured to the impact of clearly descriptive icons such as this. Consumers expect nicely rendered graphics and do not perceive them as being in any way indicative of commercial origin without a further indication in this sector. This is particularly so when apps, which are sold in online marketplaces, originate from various different commercial undertakings and competitors as acknowledged by the applicant in paragraph 43 of its observations in respect of the consumer environment. While a specific level of creativity or imaginativeness is not a prerequisite, the overall impression here is that of a mere bar graph, like the generally known status bar showing low battery.

3. The relevant public perceive icons on touchscreen mobile devices as indicators of trade origin.

That is exactly what this file is about, whether or not the relevant public sees anything more than a pictogram showing a representation of measurement. The Office claims that the relevant consumers see pictograms just as what they are: pictograms that speak a universal language and help people understand how to find their way and how to manage things without using words. The applicant’s claim is unsubstantiated. Consumers click on the icons on their devices which enable them to do the things they want to do or they view icons as informative, and do not perceive them as being inherently indicative of commercial origin without a further indication or specific foreknowledge.

4. The relevant case law consists essentially or especially of C-398/08, T-128/01 and C-329/02P.

VORSPRUNG DURCH TECHNIK, Jeep radiator grille, a colour mark and SAT.2 are not the most persuasive cases from the Court’s history to serve as evidence for the acceptance of an icon or informational pictogram.

Since the applicant cites these judgments throughout its writ of 7 April 2015, it is worthwhile to comment briefly upon each of them:

VORSPRUNG DURCH TECHNIK is a slogan of the Volkswagen Group, mainly used by Audi. The Court of Justice noted that it had been in use for a long time, although a 7(3)-claim was never formally introduced in the proceedings.

It puzzles the Office why the applicant relies on this slogan in order to have its pictogram registered. The type of mark is completely different, the goods are different and the whole history of the file is different. The applicant speaks of “evolving” trade marks, but does not justify why VORSPRUNG DURCH TECHNIK is properly applicable here.

Jeep radiator grille

The Jeep grille is somewhat distinctive. It looks like no other car radiator grille. It has an old-fashioned touch. Certain car-loving consumers may recognize a particular vehicle by their radiator grille, but the Office is not convinced that the average consumer would discern the trade origin of the vast majority of motor cars from this feature or that the case applies here.

SAT.2

This was one of the first judgments on absolute grounds ever rendered by the Luxembourg Courts (T-323/00 dated 2 July 2002). It was later reversed by the Court of Justice in its judgment C-329/02P dated 16 September 2002, only a few months after the POSTKANTOOR- and BIOMILD-judgments, which introduced the perceptible difference in case law.

The Office does not see the relevance of this judgment to the icon under examination. The Court’s remark that “the frequent use of trade marks consisting of a word and a number in the telecommunications sector indicates that that type of combination cannot be considered to be devoid, in principle, of distinctive character” par. 44), clearly distinguishes it from the instant case. The picture sign in this case is illustrative of a function or status, and is incapable of distinguishing the goods applied for from those of other undertakings which design and incorporate similar graphs which indicate a tool, program or application relating to statistics or status, on its own.

5. Relevance to the goods.

The Office maintains that all of the remaining objected goods applied for in class 9 are/ function with electronic goods and accessories which may feature or contain an application which facilitates presentation in graph form, or are ancillary goods capable of being used with such products together with their parts and fittings. Given the banality of the information which would be perceived, the picture is not capable of functioning as a badge of origin in relation to those goods (not including the exceptions indicated), since the consumer would simply assume that the goods possess the ascribable feature or characteristic. There is nothing allusive about it.

As previously stated, the mark simply represents a characteristic of the goods (computers) or goods that are commonly used with computers or any other product from class 9. The public will see the bar chart as a pictogram on a mobile phone, a computer, a tablet or something similar, indicating the access to a program, tool or application, which allows the user to produce statistical information.

6. The sign was accepted without difficulties in other jurisdictions.

The Community 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 Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community 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

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

The Office finds that the figurative mark applied for consists of a combination of elements that are typically used to indicate the content of a program, or is simply a variation thereof. Since the image is merely of a white graph against a contrasting green background, it follows that the image in question cannot be sufficiently distinguished from other images commonly used in respect of like technological goods and applications, and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

Accordingly, the mark applied for does not enable the average consumer, even with a higher level of attention, to identify the goods in question and distinguish them from those of another commercial origin. Therefore, it is devoid of distinctive character for those goods.

7. The Office has already accepted less distinctive marks.

The applicant cites a number of registrations of mature marks which do not reflect current best practice which evolves with the market place and jurisprudence. The recent marks cited by the applicant do not bear comparison either, as they feature additional elements such as semiotics, an added allusive figurative element or a visual pun such as the graph which looks like an iconic bridge all of which may be seen to confer a measure of distinctiveness.

In any event “..according to settled case‑law, ‘decisions concerning registration of a sign as a Community trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d'une plaque de verre’, paragraph 35).

8. The sign has acquired distinctiveness through use.

Under Article 7(3) [CTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) CTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [CTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark.

Second, in order to have the registration of a trade mark accepted under Article 7(3) CTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation. (i.e throughout Europe in this instance.)

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: 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 goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods 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) CTMR is satisfied.

The Office has carefully examined all the evidence presented. It is considered that the evidence provided is not sufficient to prove that the mark applied for has become distinctive in consequence of the use which has been made of it in the relevant territory under the circumstances referred to in Article 7(3) CTMR.

The evidence simply does not constitute actual evidence of the perception of the consumer in relation to the mark at all. In these circumstances, the Office has not been presented with sufficient information in respect of which evidence could be extrapolated justifying registration. The weight of the applicant´s evidence does not suggest that the mark is registrable in relation to the specification, or that the specified products could only be associated with the applicant and no other.

The Screenshots from the applicant’s own website and third party websites do not prove that the sign has acquired distinctiveness through use. It only proves that the sign is used, but not that it has become distinctive as a trade mark in the eyes of the relevant consumer, and in the absence of a further identifier. There is very little independent evidence. The press releases are not corroborative of anything other than the existence and promotion of products by the applicant. These, taken together with the screenshots in different languages, the instructional material and the thesis excerpt fall far short of the independent evidence required to establish that the sign has acquired distinctiveness in the eyes of the consumer throughout the European territory, or in the eyes of a significant proportion of those consumers in a substantial part of the relevant territory. There are no statements from chambers of commerce and industry or other trade and professional associations or anything from which the requisite independent information could be extrapolated. The research paper is a study of consumer behaviour “in Apple´s app store”, which could presuppose a level of knowledge of the likely trade source of an app.

The Office does not dispute the profile or goodwill of the applicant as demonstrated by the witness statement and its 11 exhibits, but does not accept that this mark would be viewed as a trade mark on its own, either inherently or as a result of acquired distinctiveness, given the nature of the evidence and the obviousness of the illustration.

The evidence supplied is not sufficiently longstanding (2013), weighty, independent or relevant to endow the mark with distinctiveness through use.

Further time is sought to furnish additional evidence.

The office would grant the applicant further time to submit other materials or evidence if it could be seen from the quality of the evidence already furnished that the information necessary to overcome an objection on Article 7(3) grounds was capable of being shown. This is not the case here. For the reasons set out above, no further time may be granted.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(3) CTMR, the application for Community trade mark No 12717914 is hereby rejected for all but the following accepted goods:

Class 9: fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; whistle alarms; sunglasses; animated cartoons; egg-candlers; dog whistles; decorative magnets; electrified fences; electrically heated socks.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

Keeva DOHERTY