Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 13/04/2016

CURELL SUÑOL S.L.P.

Via Augusta 21

E-08006 Barcelona

SPAIN

Application No:	13 366 117
Your reference:	CTM/S-4420
Trade mark:
Mark type:	Figurative mark
Applicant:	XYZPRINTING, INC. 10 F., No. 99, Sec. 5, Nanking East Road Taipei TAIWÁN

The Office raised an objection on 19/01/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 15/03/2016, which may be summarised as follows:

1. The relevant public of the goods and services for which registration is sought is the general public and it would not understand the descriptive meaning of the mark in question. Only people with industrial engineering background, which is a very small percentage of the consumers, would identify the descriptive meaning.

2. The mark , as a whole, is not descriptive and it possesses at least the minimum degree of distinctive character required.

3. The letters ‘XYZ’ are taken from the applicant’s name, ‘XYZPRINTING’, and are the distinctive part of the applicant’s name. The applicant has several national and European Union trade mark registrations, which contain the element ‘XYZ’. Therefore, the applicant, through the use of ‘XYZ’ letters, gains distinctiveness on the market for all its goods and services.

4. Comparable marks have previously been accepted by the Office.

5. An identical mark has previously been accepted by the Office.

6. Comparable and identical marks have previously been accepted by other national offices.

Pursuant to Article 75 EUTMR, 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, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

With regard to the applicant’s observations, the Office responds as follows:

1. The relevant public is the general public and it would not understand the descriptive meaning of the mark in question.

The Office cannot agree with the applicant’s argument. As stated by the Office in the objection letter of 19/01/2016, the objectionable goods and services covered by the mark applied for are aimed at both the average consumers and a professional public. There is no reason to say that the relevant public of the goods and services in question is only the general public and not a professional public. As accepted by the applicant, the professional public would immediately understand the descriptive meaning of the mark, a controlled robot that is programmable in three axes, in relation to the goods and services in which registration is sought.

Case-law has identified that the competent authority is entitled to categorise goods and services, and to apply with general reasoning a refusal to a category, in lieu of referring to each individual good or service (judgment of 15/02/2007, C-239/05, ‘Kitchen Company’, paragraph 38). This can be applicable to the present case.

Regarding robotic vacuum cleaners, robots for household cleaning, automatic floor cleaning machines, vacuum cleaners, electric machines and apparatus for cleaning applied for in Class 7, the relevant consumer could be a professional such as purchasers of a professional cleaning company and he would immediately understand that these cleaning goods can be programmable to clean all surfaces of a room, house or office with their three axes configuration.

When the mark perceived in relation to the electromechanically operated robots with a display and a speaker, robotic electric control apparatus, computer robots, navigation instruments, communication equipment, scanners, digital transmitters, hard disks, data storage devices, data processing apparatus, power units for robots, remote controller goods that can also be aimed at a professional public, it would inform consumers that these are robots, parts, elements and components of robots which can be programmed to function in a three-dimensional way. Regarding remote control software, downloadable software for use by remote control computers, network servers and software for managing communications between electromechanically movable telecom systems and remote control computers, the professional public would understand the descriptive meaning that this software is used for remote controlling of the robots that can be programmable in the three axes X, Y and Z.

With regard to the goods medical apparatus and instruments, testing apparatus for medical purposes, surgical apparatus and instruments and robotic surgical instruments applied for in Class 10, these goods are used for special purposes and purchase process of these goods for a hospital or health centre also needs special knowledge to assess the different alternatives. The mark, informs specialist consumer that these goods are robots which can move in three axes that are programmed to make surgical operations or test body values of species or display the body parts in a three-dimensional way.

Regarding lighting apparatus in the form of robots, lighting apparatus and installations applied for in Class 11, the mark immediately informs professional consumers that these goods are robots that can be programmable to lighten a place by using its three axes configuration.

With regard to computer analysis; computer system design, monitoring of computer systems by remote access, development of programs for data processing, update of computer software services applied for in Class 42, these IT services can also aimed at a professional public. The relevant public would understand the descriptive meaning that these IT services are used for maintenance and betterment of the correct functioning of robots which are programmable in three dimensions and have three axes in their configuration.

Given that the mark has a clear descriptive meaning in relation to the goods and services 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.

2. The mark, as a whole, is not descriptive and it possesses at least the minimum degree of distinctive character required.

The applicant points out that a trade mark must be assessed as a whole, without dissecting it into its constituent parts. In response to this argument, the Office confirms that the mark applied for was assessed taking into account the mark , as a whole. Accordingly, the single dictionary definition for each word contained in the mark was considered only with the purpose of determining how the mark, taken as whole, will be understood by the relevant public. On the basis of an analysis carried out in the way described, the Office found that the relevant public will understand the mark as a meaningful expression - an automatically controlled robot, programmable in the three axes X, Y, and Z -, as described in the notice of grounds for refusal of 19/01/2016. In addition, it is also pointed out, that, according to settled case-law, the assessment of distinctive character of a trade mark consisting of a combination of elements does not preclude prior examination of the trade mark's individual features (judgment of 09/07/2003, T-234/01, ‘Orange und Grau’, paragraph 32).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 25), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 06/10/2004, T-356/02, ‘VITAKRAFT’, paragraph 51).

Furthermore, the courts have consistently held that the absence of a hyphen or a space between two words constituting a sign does not mean that the relevant public will be able to distinguish the individual elements of the expression only after analysis of and reflection on the expression, nor, as the case-law confirms, does it amount to evidence of any creative aspect capable of distinguishing the applicant’s products from those of other undertakings (judgment of 13/11/2008, T-346/07, ‘Easycover’, paragraph 52).

Therefore, the Office considers that, in the present case, the joining of the elements ‘XYZ’ and ‘robot’ does not create a perceptible difference between the whole and the mere sum of its parts. It is unlikely that the relevant public which understands the meaning of the expression of ‘XYZ robot’ would consider the expression ‘XYZrobot’ to be a trade mark just because of the absence of a space.

In addition, it is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (judgment of 15/09/2005, T-320/03, ‘LIVE RICHLY’, paragraph 68.) It is also well established that it is not necessary for a slogan to display imaginativeness or creativity which would create surprise, or make a striking impression for it to achieve the minimal level of distinctiveness required under Article 7(1)(b) EUTMR (judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, paragraph 47).

Article 7(1)(b) EUTMR makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant goods and services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR (judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 99; decision of 29/07/2002, R 335/2000-2 – ‘Homeadvisor’; and decision of 03/11/2003, R 361/2003-2 – ‘LITIGATION ADVISOR’). The Office considers, therefore, that it is highly unlikely that, the consumer could perceive the mark as a badge of origin capable of distinguishing the applicant’s goods and services from those of other undertakings.

Furthermore, as regards the claim that, as the mark is not descriptive, it is distinctive, it should be pointed out that, owing to the abovementioned unequivocal meaning, the mark , fails to create the impression in the mind of the relevant consumers that it is an indicator of origin. According to the case-law of the European Courts, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (see judgment of 12/06/2007, T-190/05, ‘TWIST & POUR’, paragraph 39).

3. The applicant, through the use of ‘XYZ’ letters, gains distinctiveness on the market for all its goods and services.

The applicant claims that the letters ‘XYZ’ will be associated with the applicant’s name, ‘XYZPRINTING’. However, there is no evidence to show that a consumer of the relevant goods or services is aware of the applicant’s name and will perceive the letters ‘XYZ’, which may have a number of possible interpretations, as referring to the applicant’s name. Nor is there any proof that the applicant’s other signs featuring ‘XYZ’ are known to the public and that the public will perceive the sign applied for as another trade mark in the family of the applicant’s ‘XYZ’ marks. Such an association is a matter of proof. A statement of acquired distinctiveness should be proven pursuant to Article 7(3) EUTMR. However, the applicant has not indicated that the trade mark it has applied for is widely known or has been extensively used and, thus, acquired distinctiveness through use.

4. Comparable marks have previously been accepted by the Office.

As regards the applicant’s argument that a number of comparable registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union 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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

In addition, an analogy cannot be made between these signs and the current application, as, for example, the signs ‘XYZfarming’ and ‘XYZlife’ do not convey any specific meaning. Furthermore, some of the signs contain figurative elements and other word elements. In the present case, the mark has a meaning which will be perceived as descriptive in relation to the relevant goods and services.

5. An identical mark has previously been accepted by the Office.

The Office cannot agree with the applicant’s argument. The registered ‘XYZrobot’ trade mark (EUTM No 13 166 764) was also refused because of descriptiveness and non-distinctiveness in relation to goods and services such as robots, industrial robot, gearbox, microprocessors, computers, computer programs, computer software, data processing apparatus and retailing of these goods.

6. Comparable and identical marks have previously been accepted by other national offices.

As regards 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.

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

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 40).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 13 366 117 is hereby rejected for the following goods and services:

Class 7 Robotic vacuum cleaners; electric vacuum cleaners; robots for household cleaning; automatic floor cleaning machines for consumer use; automatic machines for use in the field of interior maintenance of households and commercial buildings, namely, vacuum cleaners; rinsing machines; electric machines and apparatus for cleaning.

Class 9 Electromechanically operated robots with a display and a speaker enabling them to collect images and sound data from its surroundings and report back to a remote operator; the latter for use in connection with navigation, telephone and incoming call reminder functions, sound transmission, image transfer, multi-function digital transmission, photography, TV camcorder, projector, scanners, Internet servers, communication, fire fighting, switches, electric and electronic locks, anti-theft warning, temperature and humidity indicators, gas leak detectors, lighting regulation, time recording, timers for automatic apparatus, CCTV monitor and telemedicine services; robotic electric control apparatus for video and audio monitoring, surveillance and communication; computer robots for personal, educational and leisure use; navigation instruments; communications equipment; scanners; bar code scanners; multi-function digital transmitters; hard disks; image transfer apparatus; data storage devices; data processing apparatus; power units for robot; remote control software; downloadable software for use by remote control computers; remote controllers; RAM modules; computer forensics modules; network servers and software for managing communications between electromechanically movable telecom systems and remote control computers.

Class 10 Medical apparatus and instruments; testing apparatus for medical purposes; surgical apparatus and instruments; robotic surgical instruments.

Class 11 Lighting apparatus in the form of robots; lighting apparatus and installations.

Class 42 Computer analysis; computer system design; monitoring of computer systems by remote access; development of programs for data processing; update of computer software.

The application is accepted for the remaining goods.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Mustafa IMAMOGLU