Refusal of application for a European Union trade mark

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

Alicante, 12/04/2016

LANE IP LIMITED

2 Throgmorton Avenue

London, EC2N 2DG

REINO UNIDO

Application No:	014684617
Your reference:	0009.0421EM
Trade mark:
Mark type:	Figurative mark
Applicant:	NetScout Systems, Inc. 310 Littleton Road Westford Massachusetts 01886 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/11/2015 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.

For ease of reference the contested services are listed below:

Class 9 Computer hardware; computer software.

Class 37 Technical support services; computer hardware and computer software technical support services.

Class 41 Education and training services.

Class 42 Consulting services; design, development, installation, repair and maintenance of computer hardware and computer software.

The applicant submitted its observations on 14/12/2015 which may be summarised as follows:

1. The Applicant attests the subject mark is not a sign commonly used and possesses a sufficient degree of distinctive character in its own right to perform the function of a badge of origin. The mark is clearly recognisable as a trade mark and as denoting the commercial origin of the goods and services covered by the subject application by the professional public in question. As such we contend that the mark is inherently distinctive and therefore registrable.

2. Furthermore, the OHIM have previously accepted less distinctive ‘basic shape’ type marks, thus leading to clear inconsistency in refusing the more distinctive version of the applicant’s mark in issue

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.

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).

The marks referred to in Article 7(1)(b) EUTMR 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 its submissions the applicant has argued that the overlap element with the clear shadow showing underneath the overlap of the curved line, gives the logo an additional unusual and striking feature continuing the curved line looping back around to the overlap and that because of these features the relevant professional consumer will see the whole logo as visually memorable enough to be capable of clearly functioning as an indication of origin.

The Office has noted the applicant’s submission. However, the Office cannot find anything unusual or distinctive about the mark applied for as it consists of a simple geometric shape with minor features which will be seen as a mere decorative flourish which does not serve to endow the mark as a whole.

Moreover, it has not been proven that the trade mark will enable consumers to immediately grasp the origin of the services and to allow consumers to make repeated use of the goods and services in the future and therefore it can be said that the figurative sign cannot be easily and immediately memorized by the relevant public as a distinctive sign. (Judgment of 25/09/2015, T-209/14 paragraph 43)

As regards the applicant’s argument that a number of similar 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 014326508 is hereby rejected for all the goods/services claimed.

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.

Richard THEWLIS