Refusal of application for a European Union trade mark

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

Alicante, 21/10/2016

PONS PATENTES Y MARCAS INTERNACIONAL, S.L.

Glorieta de Rubén Darío, 4

E-28010 Madrid

ESPAÑA

Application No:	014910913
Your reference:	CTPMK15200EM
Trade mark:	CHIC
Mark type:	Word mark
Applicant:	Hangzhou Chic Intelligent Technology Co., Ltd. Building 9, Qixianqiao Village Liangzhu Sub-District, Yuhang District Hangzhou City, Zhejiang Province REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 23/12/2015 and on 05/05/2016 pursuant to Article 7(1)(b) and 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letters.

The applicant submitted its observations on 23/02/2016, which may be summarised as follows:

1. The expression ‘chic’ is merely used in fashion industry but not for the applied goods and services in Classes 9, 12 and 42. The applied goods and services tend to be functional but not fashion.

2. The applicant claims that the applied mark has acquired distinctiveness through use.

3. The evidence provided by the applicant consists of the following:

• Catalogues

• Invoices

• Exhibitor on trade fairs in China and Germany

• Distributor agreement contract

• US design certificate

• Sales report

• Links on videos

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.

According to settled case-law, the marks referred to in Article 7(1)(b) of EUTMR are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who has acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (25.04.2013, T-145/12, Eco Pro, EU:T:2013:220, § 15; 27.06.2013, T-248/11, Pure Power, EU:T:2013:333, § 14).

The general objective behind the distinctiveness requirement concerns the interests of consumers to identify and distinguish between the goods and services on the market (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 36).

In the present case, it is not disputed that the relevant public is the English-, French- and German-speaking public of the European Union. The applicant disputes that the word ‘chic’ is used for the goods applied for. However, the applicant did not comment on the submitted internet extract in the letter of the Office of 05/05/2016. The applicant did not reply at all to this second objection letter.

As already stated in that letter the relevant consumer will understand the applied sign as ‘stylish or elegant’.

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’, paragraph 31).

The relevant public would perceive the expression ‘CHIC’ as a promotional laudatory message, the function of which is to communicate an inspirational or motivational statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that they are fashionable, stylish or elegant (judgment of 21/01/2010, C‑398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 34).

There is nothing about the expression ‘CHIC’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 14 910 913 is hereby rejected for the following goods and services claimed:

Class 9 Data processing apparatus; Computer software applications, downloadable; Computer operating programs, recorded; Computer peripheral devices; Protection devices for personal use against accidents; Counters; Batteries, electric, for vehicles; Steering apparatus, automatic, for vehicles; Signs, luminous; Navigation apparatus for vehicles [on-board computers].

Class 12 Remote control vehicles, other than toys; Electric vehicles; Vehicles for locomotion by land, air, water or rail; Cycle cars; Mopeds; Electric bicycles; Bicycles; Electrically powered scooters; Scooters [vehicles]; Golf carts [vehicles].

Class 39 Passenger transport; Transport of travellers; Car rental; Vehicle rental; Garage rental; Travel reservation; Courier services [messages or merchandise]; Sightseeing [tourism]; Packaging of goods; Rental of motor racing cars.

Article 7(3) EUTMR

Under Article 7(3) [EUTMR], 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) EUTMR, 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) [EUTMR], 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. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, 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 … .

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) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(See judgment of 10/11/2004, T‑396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63.).

The Office has carefully studied the information provided. The final outcome depends on the overall assessment of the evidence in each individual case. In general, in the present case further material is necessary for establishing evidence of use, since the statements of the applicant, namely that the applicant has been using the mark to promote its goods and services has not been adequately proved in its submission.

Since one of the main functions of a trade mark is to guarantee the origin of goods and services, acquired distinctiveness must be assessed in respect of the goods and services at issue. Consequently, the applicant’s evidence must prove a link between the sign and the goods and services for which the sign is applied for, establishing that 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 (judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 52; and judgment of 19/05/2009, T-0211/06, ‘Cybercrédit et al.’, para. 51).

In summary, the Office concludes that the material submitted is not sufficient for it to determine that the mark ‘chic’ had, at the date of the filing of the application, acquired distinctiveness through use made of it in respect of the goods and services claimed within the relevant Member States (the United Kingdom, Ireland, Malta for the English speaking public, Luxembourg, Belgium and France for the French speaking public and Germany, Denmark, Austria, Belgium, Luxembourg and Italy for the German speaking public), to the extent that it would allow the relevant public to identify the goods as originating from a particular undertaking because of the mark. The submitted documents do not show any market share of the sign ‘Chic’ in the relevant territories. The Office cannot but conclude that the evidence presented is insufficient in order to demonstrate that, in the eyes of the relevant public, the mark has become distinctive in relation to the goods and services applied for, as a result of use made of it.

Consequently, acquired distinctiveness under Article 7(3) EUTMR has not been proven.

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.

Martin EBERL