Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/01/2016

SANDERSON & CO.

34 East Stockwell Street

Colchester, Essex CO1 1ST

REINO UNIDO

Application No:	014409403
Your reference:	5/T11608.EU
Trade mark:
Mark type:	Figurative mark
Applicant:	CJ E&M Corporation CJ E& M Center, 66 Sangamsan-ro, Mapo-gu Seoul REPÚBLICA DE COREA (LA)

The Office raised a partial objection on 15/09/2015 pursuant to Article 7(1)(b) CTMR because it found that the following trade mark is devoid of any distinctive character, for the reasons set out in the attached letter:

For ease of reference, the contested goods are listed below:

Class 28 Toys for domestic pets; Playthings; Dolls; Toys; Plastic toys; Toy robots; Transformable toys; Prefabricated toys; Toy boats for water recreation purposes.

The applicant submitted its observations on 16/11/2015, which may be summarised as follows:

• The subject mark is a figurative mark and not a three-dimensional mark as stated in the examiner’s letter. Whilst the quality of the presentation imparts the appearance of a 3D mark this is a feature of its distinctiveness.

• Much of the quoted case-law refers to three-dimensional marks so are different to the present mark, but in any case, even if the sign were a three dimensional mark, it would still not be devoid of distinctive character.

• The mark is a fanciful and unique design incorporating various unusual elements vaguely reminiscent of a train in robot form.

• It has human like qualities, menacing expressive eyes and a mouth that is large, gaping and threatening. The image also shows the figure to be riding a powered skate board or the like. The image was created by the applicant and it is highly distinctive and original.

• It is not a simple robot-like figure; it is instead a highly distinctive and fanciful representation that has never been seen before.

• The mark is shown in a combination of contrasting colours and in a striking pose with strange “body” features. All these special features in combination allow it to function as a business identifier not just for figures having this appearance but for any other toys.

• Even (although there is no indication to this effect in the objection) if the sign were used in a form that represented the shape and appearance of the goods it will still be perceived as an indication of origin.

• The sign departs significantly from the norms or customs of the sector of toys including “robot toys”. As a figurative sign the present mark is distinctive as it does not appear like any generic product with the category.

• The mark reflects a highly distinctive character with a fanciful appearance and not merely any generic toy.

• Any product bearing this mark will be immediately recognisable to purchasing consumers and to children that are often involved in driving such a purchase as coming from a particular origin.

• Character marketing of a range of goods within the broad definition of toys and playthings is common and many marks operate on recognition of a character. Such characters often have a name that is linked to a story and in this case the character is called ‘DUKE’.

• It would readily and without undue burden inform the average consumer of the origin of the product.

• The Examiner is referred to the appeal decision in case R2387/2013-4 which is on all fours with this case and for which registration of the mark (being a fanciful representation of a made up animal figure) was allowed for these goods in Class 9.

• The Examiner is also referred to the related decisions in Appeals R1801/2014-4 and R1800/2014-4. In particular paragraphs 12 – 14 of these decisions address the applicability of Section 7(1)(b) objection to goods in Class 28.

• In addition in the decision of the Fourth Board of Appeal dated 26th September 2014 case R285/2014-4 with respect to goods in Class 28. (they also may consist of an arbitrary and fanciful combination of various elements that divert from such standards (22.07.2013, R 1926/2012-2, Device of a Koala bear; 26.09.2014, R 2387/2013-4, Device of a millipede toy).

• From these cases it is apparent that figurative marks of less distinctive appearance than the present mark do, for the relevant goods in class 28, meet and exceed the threshold of distinctiveness. As such by analogy the present mark should be allowed.

• It follows that with respect to the goods at issue no norms or customs of the sector exist against which the mark applied for could be measured.

• The examiner did not even claim let alone demonstrate that standard shapes of plush toys and toy figurines may exist.

• Various design of marks (including robot like ones) covering the goods “toys” in Class 28 have already been registered.

• The present mark is at least as distinct in respect of the relevant goods and services as are the previous accepted marks. It would be inconsistent with the registration of the previous marks and the above appeal decisions to reject the application for the relevant goods.

• The objection seems mostly directed at toys resembling robots, but some of the listed goods are simply nothing like such goods. For example in respect of “toys for domestic pets” and “toy boats for water recreation purposes” the objection has no basis as the mark cannot be said to be a “representation of the goods concerned”. Also a robot like toy is different to “dolls” and so the objection has no basis for such goods.

• The mark is distinctive in respect of all the goods for which it currently is subject to objection.

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, the Office has decided to maintain the objection.

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

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR 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).

The marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T-79/00, ‘LITE’, paragraph 26).

It is settled case-law that ‘a sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (judgment of 09/10/2002, T-360/00, ‘UltraPlus’, paragraph 43).

In the present case the applicant disagrees with the legal assessment provided by the Office and considers that the figurative trade mark applied for is sufficiently distinctive in respect of all the objectionable goods.

At the outset it is noted that the applicant wishes to clarify that the subject mark is a figurative mark and not a three-dimensional (3D) mark as stated in the examiner’s letter, adding that whilst the quality of the presentation imparts the appearance of a 3D mark this in fact is a feature of its distinctiveness. However, in response the applicant is informed that whilst the case law quoted by the examiner was developed developed in relation to three-dimensional trade marks consisting of the shape of the product itself, the case law brought to the applicant’s attention also applies where the contested mark is a figurative mark consisting of the two-dimensional/figurative representation of that product and as such in the present case the mark merely consists of a sign directly related to the appearance of the actual goods it covers.

Moreover, it should be noted that the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those to be applied to other categories of trade mark. Nevertheless, when those criteria are applied, account must be taken of the fact that the perception of the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word mark, a figurative mark or a three-dimensional mark not consisting of that appearance. Whilst the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself.

As worded by the applicant, the representation of the mark applied for is not a simple robot-like figure, it is instead a highly distinctive and fanciful representation that that has never been seen before. The applicant further attests that the mark is shown in a combination of contrasting colours and in a striking pose with strange “body” features, adding that these special features in combination allow it to function as a business identifier not just for figures having this appearance but for any other toys. However, the Office cannot agree with this viewpoint.

With three dimensional marks which correspond to the shape of the product, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) CTMR. Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) CTMR. The Office remains of the opinion that the mark in question does not departs significantly from the norm or customs of the relevant sector.

Clearly, products in the marketplace such as those contested vary in their appearance, shape and size. The applicant argues that the particular shape of the mark in question will be perceived as distinctive to the relevant public. However, the Office is not persuaded by this argument. It is maintained that the relevant public will not perceive the particular shape and appearance of the subject mark as an indication of origin considering it does not significantly depart from other similar products on the market.

The argument that the image concerned was created by the applicant and as such is original is noted however, even if the shape was intended to be novel, it must be determined that this is not a relevant factor in the criterion for the assessment of the distinctiveness of a trade mark. Rather the shape of a trade mark must stand out significantly from specific basic shapes of the goods concerned that are customary in trade, and should not appear to be simply a variant of those shapes. It remains the Office’s viewpoint that this does not apply in the present case.

The contested goods are Toys for domestic pets; Playthings; Dolls; Toys; Plastic toys; Toy robots; Transformable toys; Prefabricated toys; Toy boats for water recreation purposes and the sign submitted depicts a standing, two-dimensional/figurative toy robot-like figure featuring various colours. It is submitted that insofar as the contested goods are concerned it is common practice to apply numerous bright colours on the basis that the target market, namely children, are drawn and attracted to bright/variant colours and find them both stimulating and interesting. Therefore, in terms of the goods concerned, it is common practice for colours and combinations of colours to be used. As such the Office disagrees that the colour elements present in the mark add any distinctiveness. Consequently, whilst the Office notes the colour combination present in the mark, the Office cannot accept that this amounts to use as a trade mark or will be taken as such by a consumer, but rather will simply be seen as a representation of the goods themselves.

The applicant states that the mark has human like qualities which include menacing expressive eyes and a mouth that is large, gaping and threatening. The image also shows the figure to be riding a powered skate board or the like. The applicant sates that the mark is not a simple robot-like figure but is instead a highly distinctive and fanciful representation that has never been seen before. The Office cannot agree with this viewpoint.

Once again, as with colour, the characteristics listed by the applicant are all akin to characteristics found on similar goods to those concerned on the market place. Whilst the Office does not dispute that the features detailed are indeed present, the Office again fails to accept that this amounts to use as a trade mark or will be taken as such by the consumer. It is by no means unusual for products on the market, such as those applied for, to incorporate features such as those present in the subject mark. Therefore, the Office cannot agree that the colours and other features present in the mark, as detailed by the applicant are ‘special features’ that ultimately allow it to function as a business identifier for the goods concerned.

It is noted that the applicant raised the point that the examiner did not demonstrate that standard shapes of plush toys and toy figurines such as the subject mark may exist. However, As regards the argument that it is up to the Office to show that other similar signs are used in the market, the Court has confirmed that where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Board of Appeal is not obliged to give examples of such practical experience (See judgment of 15/03/2006, T 129/04, ‘Forme d'une bouteille en plastique’, paragraph 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T 194/01, ‘Tablette ovoïde’, paragraph 48).

It is important to recall that consumers must be able, without the need to reflect or take mental steps, be able to distinguish the goods of the applicant from those of other undertakings. The fact that none of the applicant’s competitors have used the exact same design on their products does not prove that consumers will identify the origin of the applicants goods based solely on the design of the sign in question. 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 in question. The lack of prior use cannot automatically indicate such a perception.’ (Judgment of 15/09/2005, T-320/03, ‘LIVE RICHLY’, paragraph 88).

It is important to recall that the essential function of a trade mark is to distinguish the goods of one undertaking from those of another. According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [CTMR]’ (judgment of 12/01/2006, C-173/04 P, ‘Deutsche SiSi-Werke’, paragraph 31). The Office remains of the viewpoint that in the present case the sign does not significantly depart from the norm.

A trade mark has to have a minimum degree of distinctiveness to be immediately perceived by the relevant public as designating the commercial origin. In the present case, the Office maintains that the features of the mark applied for, taken alone or combined with each other are not distinctive.

The Court has consistently held that the distinctive character of a trade mark for the purpose of Article 7(1)(b) means that the mark in question makes it possible to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the products from those of other undertakings. That distinctive character must be assessed first by reference to the products applied for and second by reference to the perception of the relevant public.

The goods at issue in Class 28 are addressed at the average consumer. In general such goods are low priced and do not warrant a particular degree of attention at the time of purchase. As previously mentioned, distinctiveness within the meaning of Article 7()(b) CTMR, requires that a sign must identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and to distinguish the goods and services from those of other undertakings.

Article 7(1)(b) CTMR covers signs which do not enable the relevant public to repeat the experience of a purchase if it proves to be positive or to avoid it if it proves to be negative on the occasion of subsequent acquisitions of the goods concerned (see judgement of 3 July 2003, T-122/01, ‘Best Buy’ para 20). The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of distinctive character for the purpose of Article 7(1)(b) CTMR, only a trade mark that departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of distinctive character. A simple departure from the norms or customs of the sector, as in the present case, is not sufficient, the departure must be significant See judgement of 12 February 2004, C-218/01 ‘Perwoll’, para 49).

In the present case, the mark applied for clearly shows the shape of a toy/plaything, namely the rejected goods themselves. The criteria for assessing the application are consequently those of a two-dimensional figurative mark showing a reproduction of the goods themselves. As previously mentioned, according to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [CTMR]’ (judgment of 12/01/2006, C-173/04 P, ‘Deutsche SiSi-Werke’, paragraph 31). The Office remains of the viewpoint that in the present case the sign does not significantly depart from the norm.

The applicant submits that character marketing of a range of goods within the broad definition of toys and playthings is common and many marks operate on recognition of a character, adding that such characters often have a name that is linked to a story and in this case the character is called ‘DUKE’. Whilst it may well be true that the ‘character’ image applied for is called ‘DUKE’ this is not evident from the mark submitted which is merely the shape of a toy robot represented without words, therefore the Office maintains that it would not be perceived as an indication of origin and remains devoid of distinctive character. As such, the representation of the mark as filed does not permit the relevant consumer to distinguish the rejected goods as to their commercial origin and is therefore non-distinctive within the meaning of Article 7(1)(b) CTMR in relation to all the contested goods.

Accordingly, the mark applied for does not enable the average consumer, who is reasonably well-informed and reasonably observant and circumspect, 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.

Furthermore, the colours contained in the mark cannot be said to be endowed with a particular attribute enabling the consumer to suppose that they are anything other than the colours of the goods themselves. The combination of colours contained in the mark is unlikely to be noticed and remembered as an indication of commercial origin by a relevant consumer. As such, taken as a whole, the mark applied for merely consists of no more than a depiction of the goods themselves and is not markedly different from various other toys and playthings etc., already on the market, but is simply a variation thereof.

It follows that the figurative representation of the mark in question, despite the combination of colours, cannot be sufficiently distinguished from other shapes commonly used in the toy/plaything field and will not enable the relevant public to immediately and without certainty distinguish the applicant’s goods from those of another commercial origin without first being educated to do so. The consumer must be able without the need to reflect or take mental steps distinguish the goods of the applicant from those of other undertakings. The fact that none of the applicant’s competitors have used the same design on their products does not prove that consumers will identify the origin of the applicant’s goods.

The applicant referred to a number of past accepted Community Trade mark registrations including a number of appeal decisions which the applicant believed to be on par with the subject mark. The applicant submits that it is apparent that figurative marks of less distinctive appearance than the present mark do, for the relevant goods in class 28, meet and exceed the threshold of distinctiveness and as such by analogy the present mark should be allowed.

However, the applicant is reminded that as regards the argument that a number of similar registrations have been accepted by OHIM, 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).

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).

The applicant submits that the objection seems mostly directed at toys resembling robots, adding that some of the listed goods are simply nothing like such goods, for example in respect of “toys for domestic pets” and “toy boats for water recreation purposes”. The applicant argues that the objection raised has no basis as the mark cannot be said to be a “representation of the goods concerned”. The applicant further attests that the mark appears nothing like a pet toy or a toy boat, adding that a robot like toy is also different to “dolls” and so the objection has no basis for such goods. The Office does not agree with this viewpoint. Clearly, it is not insurmountable for toys for domestic pets or dolls to appear in the form of the mark applied for since in terms of both ‘pet toys’ and ‘dolls’, they come in many, many various designs and therefore, could legitimately include toys or doll resembling a robot.

Furthermore, with regards to the comments concerning “toy boats for water recreation purposes” again the Office remains of the viewpoint that the objection is a valid one on the basis that the figurative mark in question appears to also be a representation of a transformable toy and therefore it is reasonable to assume that the sign is a representation of a robot figure that has transformed from a toy boat. Therefore the objection is maintained.

Consequently, following the above, it remains the Office’s viewpoint that the figurative trade mark applied for is devoid of distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) CMTR.

Accordingly, due to the reasons set out above, and pursuant to Article 7(1)(b), and 7(2) CTMR, the application for the Community Trade Mark:

is hereby rejected for the following goods:

Class 28 Toys for domestic pets; Playthings; Dolls; Toys; Plastic toys; Toy robots; Transformable toys; Prefabricated toys; Toy boats for water recreation purposes.

The application will be accepted for the remaining goods, namely:

Class 9 Electric audio and visual apparatus and instruments; Cell phone cases; Downloadable smart phone application (software); Video game cartridges; Helmets; Phonograph records; Downloadable image files; Recorded DVDs (of non-music); Downloadable electronic fairytale books; Electronic coupons; Animated cartoons.

Class 25 Clothing; Footwear; Clothing for gymnastics; Children's clothing; Under garments; Socks; caps [headwear]; Winter face masks [clothing].

Class 28 Butterfly nets; Christmas tree decorations, except confectionery and electric Christmas lights; Fairground ride apparatus; Wax for skis; Games; Board games; Parlour games; Playing cards for the game pog; Puzzles; Sporting articles (other than golf articles and climbing articles); Playing balls.

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.

Sam CONGREVE