Refusal of application for a European Union trade mark

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

Alicante, 18/04/2016

BOULT WADE TENNANT

Verulam Gardens

70 Gray's Inn Road

London WC1X 8BT

REINO UNIDO

Application No:	014656722
Your reference:	FKH/LDP/T143725EM00
Trade mark:
Mark type:	Figurative mark
Applicant:	Harman International Industries, Incorporated 8500 Balboa Blvd. Northridge, California 91329 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/10/2015 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

On 21/12/2015, the applicant requested a two-month extension to the original time limit given to send observations in reply. The request was granted and the applicant’s observations were submitted within the time limit on 23/02/2016. These observations may be summarised as follows:

1. The goods, although goods for mass-consumption, are expensive and are not purchased every day. Therefore, the relevant consumer will have a higher degree of awareness than the average consumer.

2. The sign is similar, but not identical, to an exclamation mark. It follows that the sign has to be examined as a figurative sign and not as a simple typographical symbol.

3. The goods in question are functional, as opposed to decorative. Therefore, the sign will not draw consumers’ attention to the appearance of the goods, and this has an impact on the distinctiveness. Because the goods are functional, the use of an exclamation mark to catch the eye is not applicable and the sign is, therefore, not laudatory. The sign is rather unusual in relation to the goods.

4. The resemblance to an exclamation mark does not mean that the sign is undoubtedly devoid of distinctive character. Only very simple exclamation marks would fall foul of Article 7(1)(b) EUTMR.

5. The Office has accepted previous marks consisting of exclamation marks, less stylised than the sign in question.

6. The sign was designed expressly for the purpose of identifying the applicants’ goods. The idea behind the sign was that it resembles a ‘highly-stylised top view of an old-fashioned gramophone comprising a round turntable and a flaring horn shape’. The sign was created to be seen and remembered.

7. The mark is composed of two elements and ‘the overall impression created is far more complex than that of a simple geometric shape’. The combination of elements is uncommon for the goods in question and does not convey any information in relation to these goods. Therefore, the mark is not banal and is not a simple geometric shape.

8. The sign is capable of being remembered and would enable consumers to repeat a positive purchase experience and also, in the case of a negative experience, avoid repeating it.

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.

1. The goods are by definition goods for mass consumption that target average consumers. It may be true that they are not purchased very often by one particular consumer, but, in general terms, they are sold in large volumes, on a daily basis. Even if the goods are not purchased daily by a particular consumer, this does not make the sign, as such, distinctive. The definition of the relevant public cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C 311/11 P, ‘Smart Technologies’, paragraph 48).

2. The sign is figurative and has, at all times, been examined by applying the criteria for figurative signs. As a figurative sign, its visual similarity to a particular typographical symbol, namely an exclamation mark, stands out, and is one of the aspects of the mark that has been assessed in order to reach a conclusion on lack of distinctiveness.

3. The definition of functional goods versus decorative goods does not have any relevance to the present case. This might be important in the case of a three-dimensional sign or a position mark for which the design or the shape of the product will be remembered and act as an identifier of trade origin. However, a standard figurative sign, such as the one in question, should, by definition, be capable of helping consumers to visually identify a trade origin, when seen in relation to the relevant goods or services. Therefore, regardless of whether or not the goods are functional, the sign has to be assessed with regard to the impact of its figurative elements.

In addition, the Office does not agree that the appearance of the goods in question (apparatus for recording, transmission, manipulation, processing, broadcast and reproduction of signals, data, information, code, sounds or images as well as loudspeakers and headphones) lacks importance since the design of these goods is becoming more and more relevant. The appearance is particularly significant with regard to the wearable and portable versions of these goods. Specific models and types are marketed and sold with their design and appearance being the decisive selling factor. In the light of this, the use of an exclamation mark in relation to these goods would appear laudatory and a way of attracting consumers’ attention. In particular, and due to its high resemblance to an exclamation mark, the applicant’s sign would not be perceived as a trade identifier for these goods, as further analysed hereafter.

4. According to the Office’s Guidelines for Examination, Part B, Section 4, Absolute grounds for refusal, page 26, typographical symbols such as exclamation marks, will not be considered by the public as indicators of origin. They will merely be perceived by consumers as signs meant to catch their attention. Furthermore, these signs are frequently used in business or in advertising and, without any specific special features, are devoid of the necessary degree of distinctive character. Although not identical to an exclamation mark, the high degree of resemblance of the applicant’s sign to such a mark makes it impossible to find in it the distinctive character necessary for registration.

5. As regards the previous registrations cited by the applicant, none of the quoted cases is identical or comparable to the one in question. In any event, each case must be assessed on its own merits with due regard to the facts it is based upon and in accordance with EUTMR provisions as interpreted by the Community judicature and not on the basis of previous decision-making.

6. The motives behind the creation or design of a particular sign by its proprietor are not relevant to the examination of its capacity to serve as a trade mark. The intention that the sign should look like a ‘highly-stylised top view of an old-fashioned gramophone comprising a round turntable and a flaring horn shape’ does not, in any way, change the visual impact of the sign on the relevant public. In fact, it seems unlikely that relevant consumers would associate the described idea with the sign when seeing it for the first time. Taking into account its high degree of resemblance to an exclamation mark, the sign will be understood only as such by the relevant consumers, who will not see in it any indicator of trade origin, nor will they be able to remember it. It follows that the sign should be refused registration in accordance with Article 7(1)(b) EUTMR.

7. The applicant’s sign is not a simple geometric shape, but is very similar to an exclamation mark. Therefore, when faced with this sign, the relevant consumers would not perceive in it any particular combination of different elements, nor would they perceive the upper and lower elements to be two separate things. The overall impression created by the mark cannot be seen as anything other than a version of an exclamation mark without any other specific features that would render it distinctive as a trade mark. It does not have the minimum degree of distinctiveness necessary to allow consumers to relate it to a particular undertaking or distinguish it from other undertakings in trade.

8. As indicated above, the sign is simple and would be perceived by the relevant consumers as being similar to an exclamation mark. Its degree of distinctiveness is lower than the minimum degree necessary to allow a sign to act as a trade mark. Due to these characteristics and in the absence of any other element, consumers would not see the sign as an indicator of trade origin and it would not function as a trade mark. Therefore, the sign falls foul of Article 7(1)(b) EUTMR and must be refused.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for Community trade mark No 014656722 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60 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 800 has been paid.

Elna ISAKSSON