Refusal of application for a European Union trade mark

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

Alicante, 01/06/2016

Neil John Muttock

6 Kings Avenue

Muswell Hill London N10 1PB

REINO UNIDO

Application No:	014911622
Your reference:	objectofdesigneu
Trade mark:	OBJECT OF DESIGN
Mark type:	Word mark
Applicant:	ARMON LIMITED ITM-INVESTMENT & TRUST MANAGEMENT S.A. 17, rue du Cendrier CH-1211 Geneva SUIZA

The Office raised an objection on 04/01/2016 pursuant to Article 7(1)(b) EUTMR and Article 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 letter.

The applicant submitted its observations on 28/01/2016, which may be summarised as follows:

1. The goods in question do not include artistic or decorative goods nor does the mark include designing services, therefore it is unlikely that the relevant consumer will understand the words “OBJECT OF DESIGN” to mean a thing that has been designed.

2. The phrase “object of design” does not describe the goods, as they are created for large quantity production and sold to the mass market for functional use.

3. The Office and the UK trade mark Office have previously registered several marks following the same word construction as “OBJECT OF DESIGN”.

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.

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, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T- 320/03, Live richly, EU:T:2005:325, § 65).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 20 and judgment of 03/07/2003, T-122/01, 03/07/2003, T- 122/01, Best Buy, EU:T:2003:183, § 21).

The relevant public would perceive the expression “OBJECT OF DESIGN” 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, decorative, and aesthetically pleasing goods (judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; and judgment of 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34).

There is nothing about the expression “OBJECT OF DESIGN” 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 in question (judgment 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

1. The goods in question do not include artistic or decorative goods nor does the mark include designing services, therefore it is unlikely that the relevant consumer will understand the words “OBJECT OF DESIGN” to mean a thing that has been designed.

The Office points out that unfortunately no clarifications have been provided by the applicant that could allow one to make a reasonable conclusion that the relevant consumer is not able to understand the meaning of the claimed sign. The meanings of the words "object of design” were extracted from an Official Dictionary, the Collins English Dictionary. According to the Dictionary the mark indicates directly a thing that has been designed. According to the Office’s understanding, the Dictionary is reliable and contains valid information. Therefore the Office considers the average English speaking consumer in the EU to be able to understand the expression “OBJECT OF DESIGN” in the context of the goods in question in the same way as the Office has claimed.

2. The phrase “object of design” does not describe the goods, as they are created for large quantity production and sold to the mass market for functional use.

The Office disagrees with the applicant, as all the claimed goods could be designed even if they do not have any decorative purpose. The applicant’s assumption that large quantity production goods sold on the mass market cannot have aesthetic value does not correspond to the real market situation. Even mass produced goods and goods that have mainly a functional purpose can be objects of design. The relevant public would perceive the expression “OBJECT OF DESIGN” only 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, decorative, and aesthetically pleasing goods.

3. The Office and the UK trade mark Office have previously registered several marks following the same word construction as “OBJECT OF DESIGN”.

This question of the influence of other IP Offices’ decisions has been analysed by the European Court of Justice, and the Court pointed out that: 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 mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community 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, EU:T:2002:43, § 47.)

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 14 911 622 is hereby rejected.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.

Liina Puu