Refusal of application for a European Union trade mark

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

Alicante, 19/08/2016

pronovem Luxembourg

12 avenue du Rock'n Roll

B.P. 327

L-4004 Esch-sur-Alzette

LUXEMBURGO

Application No:	015027519
Your reference:	DT-BERE-0002/EU
Trade mark:	3DP
Mark type:	Word mark
Applicant:	3DP UNLIMITED LLC 370, 17th Street, Suite 4800 Denver Colorado 80202 ESTADOS UNIDOS (DE AMÉRICA)

On examination of the abovementioned trade mark and your observations submitted on 02/03/2016, protection is refused for the European Community because the submitted trade mark application does not comply with Article 7(1) EUTMR to the extent that:

• The trade mark is devoid of any distinctive character.

• The trade mark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods and services.

The Office raised an objection on 10/02/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR (former CTMR) because it found that the trade mark applied for is descriptive and devoid of any distinctive character for the goods applied for, for the reasons set out in the attached letter.

The applicant submitted observations within the time limit, which may be summarised as follows:

1. As first argument, the applicant claims that this Office has accepted for registration its parallel application 13693437 ‘3DP UNLIMITED’, highly similar to the mark in question and for similar/identical goods and services, making it clear the mark is neither laudatory nor descriptive.

2. Consumers would never assume the goods and services in question deal with three-dimensional printers only, as ‘3DP’ is not extensively and automatically used for such devices, moreover a lot of internet occurrences read ‘3D printing’ or ‘3D printer’. Therefore, the mark does not contain any obvious and direct information regarding either the nature or the intended purpose of the goods and services applied for.

3. There is not a single and indubitable definition of 3DP as the webpage Acronym Finder gives itself 6 different definitions. In addition, on the applicant’s website letter ‘P’ in ‘3DP’ stands for Platform, thus the link between the element 3DP and the goods and services applied for is not sufficiently closed for the sign to be refused.

4. The mark cannot be descriptive as it involves relatively new technology that most people are not yet used to thus the relevant public is not especially likely to recognize this abbreviation.

5. ‘3DP’ name is a fanciful combination that can well and truly be considered as an indication of trade origin for the goods in question, the link between them and the mark is not understood without further reflection, the terms are only if anything, suggestive or allusive.

6. From what can be seen on the applicant’s website, it is clear that ‘3DP’ serves to identify the goods and services as originating from 3D Platform and no other undertaking. Consumers will not be likely to believe the goods come from HP, Stratasys or any other undertaking but from the holder.

7. In addition to the foregoing arguments, the applicant has claimed that the mark has acquired distinctive character through use in Europe, in accordance with Article 7(3) EUTMR, and submitted evidence of acquired distinctiveness to support its assertion.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the holder has had an opportunity to present its comments.

Upon further examination of the mark in question and after giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection in whole.

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

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ 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).

In addition, according to settled case law, the descriptiveness and distinctive character of a trade mark 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 (see judgment of 29/04/2004, joined cases C-468/01 P and C-472/01 P, ‘Procter & Gamble’, paragraph 33; judgment of 08/05/2008, C-304/06 P, ‘Eurohypo’, paragraph 67; and judgment of 21/01/2010, C-398/08 P, ‘Audi’, paragraph 34).

In connection to applicant’s submissions, the Office states the following:

1. The applicant refers to its trademark application 13693437 ‘3DP UNILIMITED’, which has been accepted by this Office, being highly similar to the mark in the present case and for similar goods and services.

With this regard, the Office would like to emphasize that it does not consider the cited trade mark from the same holder as comparable to the mark in question due to the addition of the word ‘UNLIMITED’ which makes that mark grammatically, aurally, visually and syntactically different to the mark at hand, therefore, the assessment of absolute grounds for refusal must be necessarily different provided that the meaning and the message conveyed of the mark ‘3DP UNLIMITED’ are not the same as the mark in the present case ‘3DP’, consequently the impression produced by the mark in the relevant public is also diverse.

Moreover, according to settled case law, decisions concerning the 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 Community judicature, and not on the basis of previous Office practice (see 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).

Each case must be considered on the basis of its own merits, and it cannot compare that decision with other decisions taken in relation to applications for similar or even identical trade marks (see decision of 06/09/2004, R 305/2004-2 – ‘AUTHENTIC’, paragraph 23). Thus, the fact that the applicant owns an earlier registration similar to the mark at hand does not mean that the mark ‘3DP’ should be accepted.

2 - 3. This Office acknowledges that the verbal element ‘3DP’ has different meanings, namely “three-dimensional printing” and “three-dimensional printer”, however this Office maintains its view that the mark is descriptive of the nature and the intended purpose of the goods and services in question as the relevant public when perceiving the sings in trade attributes them a meaning in connection to the goods and services which are identified by such a sign.

In view of the foregoing, and in the context of the mark in question and the goods and services applied for -3D printers, 3D scanners and training on 3D printers- the consumer when seeing the mark ‘3DP’ will immediately understand its meaning as a ‘three-dimensional printer’. Furthermore, it is important to highlight that both meanings cited by the applicant are highly similar to each other and both closely related to the field of 3D printers and 3D printing technology, thus, in the event the consumer perceive the mark as 3D printing this will still trigger in its mind a descriptive message about the goods and services and so this does not suffice to make the mark distinctive to be allowed for registration.

In addition, the applicant claimed that the meaning of the mark is not clear, single and indubitable as the webpage of Acronym Finder -source of information used in the letter of objection- shows up 6 different meanings for ‘3DP’ and the applicants website refers ‘3DP’ as Three Dimensional Platform; in this regard, this Office would like to give emphasis to the fact that consumers perceive the meaning of the marks in association with the goods and services applied for, for that reason, despite the existence of other meanings of the abbreviation the consumer will only take the mark at face value and immediately interpret it using the concept that best suits in their minds and disregard other meanings which make no sense in relation to the goods or services in question. Therefore the element ‘3DP’, in connection with the goods and services applied for, will be seen in no other way than ‘three-dimensional printer’ or a device in the field of three-dimensional printing.

Moreover, in this respect, the Court of Justice has made it clear on several occasions that a term must be refused registration if at least one of its possible meanings designates a characteristic of the goods and services concerned (see judgments of 12/02/2004, C-265/00, “Biomild” and of 23/10/2003, C-191/01, “Doublemint”, paragraph 32, confirmed by judgment of 12/02/2004, C-363/99, “Postkantoor”, paragraph 97). In this view, as long as one of the meanings of the mark designates the goods and services or one of their characteristics, as in the present case, the mark is to be refused.

4. Regarding the holder’s argument that the relevant public will not recognize the abbreviation ‘3DP’ as the goods and services involved are relatively new technology that most people are not yet used to, it is important to point out that this Office is aware of the fact that technology is constantly changing developing new goods and services in such a continuous way that part of the public is not able to follow those developments and to know the new inventions immediately after being introduced in trade, however, the originality or novelty of the goods and services are not deemed as decisive factors that affect the assessment of the distinctiveness and the descriptive character of a mark as the wording of the Article 7(1)(c) is clear and does set any condition to refuse the protection of a sign other than the signs and indications may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought. Thus the fact that the relevant public might not be aware of certain technology does not mean that the mark is distinctive or less descriptive of the goods or services concerned, it is sufficient, as the wording of that provision itself indicates that such signs and indications could be used to designate characteristics of them.

4. Contrary to the holder’s opinion, this Office still considers the submitted mark ‘3DP’ as a non-distinctive enough sign to identify the goods and services applied for and to be recalled and recognized by the relevant public as a badge of origin, because the combination reached by the elements 3DP is not creative enough neither is far removed from the goods and services in question, on the contrary they are directly related to the them as the meaning of the sign ‘3DP’ will be immediately understood as ‘three dimensional printer’, thus the link with three dimensional (3D) printers, three dimensional (3D) scanners and training in the field of three dimensional (3D) printers is clear and direct and easily perceived by the consumers without further examination.

In light of the foregoing, the mark at stake cannot be deemed as suggestive due to the impression perceived by the public when encountering the elements ‘3DP’ will be ‘three dimensional printer’, consequently, the consumer will make a direct association with the goods and services applied for. Moreover, it is settled case law that a trade mark is considered distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the goods and services and enables the relevant public to distinguish them, without any possibility of confusion, from those of a different commercial origin (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

4. The element ‘3DP’ making up the mark is clearly descriptive and devoid of distinctive character to be deemed as a badge of origin or to be allowed for registration in respect of the goods and services applied for; this is the case despite the fact that the holder states that the meaning of the term ‘3DP’ shown in its website is ‘3D Platform’. The reason is that the target consumer when coming across the sings in trade immediately try to find a meaning that best makes sense to them in association with the goods and services; the consumer would only take the mark at face value and interpret it using the concept that best suits in their minds. Therefore the element 3DP, in connection with the specific goods and services in question, all related to three dimensional printers, will be seen in no other way than the cited meaning, triggering in the consumer’s mind the idea that all goods and services consist of and/or are directly related to three dimensional printers.

Consequently, the holder was right when he stated that the consumer will not be likely to believe the goods come from different undertakings like HP or others, not only that is true, but is also evident that the consumer will perceive no trade origin at all, not even the holder’s since, as explained, the mark in question does not contain any indication of a trade origin neither possesses other element verbal or figurative that renders the term 3DP with the sufficient degree of distinctiveness to fulfil the essential function of a trade mark, being capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings.

7. Regarding the holder’s argument that the mark ‘3DP’ has become distinctive within the European territory as a consequence of the use that has been made of it and the evidence submitted to support its assertion, the Office counters the following:

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; for that reason the use of the mark needs to be done to such an extent that the relevant section of the public is able to perceive it as an indication of the commercial origin of a product or service, and this is only possible thanks to the economic effort made by the trade mark holder, so that putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR is justified.

In these circumstances, 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; in the case at hand since the mark is made up of an abbreviation of a device’s name in English –a printer which prints in three dimensions-, the territories of the European Union where the distinctive character acquired through the use must be demonstrated are those where English is official language, namely Ireland, United Kingdom and Malta, hence, the distinctive character acquired through use must have been proved in all these countries.

Moreover, 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 or services 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.

In the case at hand, the evidence submitted by the holder in support of the acquired distinctive character mainly consists of printed material issued by the holder itself such as quotes, manuals, datasheets, brochures, training material, in which information about some characteristics of the goods applied for are explained.

On the other hand the rest of the evidence consists of advertisements, press releases, publications and articles published on magazines and internet.

At first instance, it is important to highlight that part of the documents submitted are dated after the filing of the present trade mark application 21/01/2016, thus this Office dismisses it as it is not suitable to demonstrate the acquired distinctive character under Article 7(3).

In respect of the quotes mentioned, these are only estimates for future potential sales but do not constitute actual records about amounts or frequency of transactions for the goods and services in question.

In addition, the majority of documents contains information about 3D printers, without including 3D scanners and training services which were also applied for as part of the present trade mark application. This Office deems also important to point out that most of the evidence refers to such goods as branded with the marks ‘3D Platform’ as well as ‘3DP1000’ which are indeed different from the mark applied for in the present case ‘3DP’, therefore, the intensive use of the mark is not demonstrated by means of this evidence.

After giving due consideration to this evidence this Office concludes that it is insufficient to prove that the mark has acquired a distinctive character under the provisions of Article 7(3).

The submitted evidence does not provide with the sufficient information which may endorse the holder’s claim that the relevant public actually recognizes in the mark ‘3DP’ a distinctive sign, the documents fails to reflect the perception of the sign within the market actor’s mind: consumers, competitors, experts in the relative field, journalists, suppliers, etcetera. Convincing evidence to proof the actual perception of the submitted mark by the relevant consumers could have been for example market shares, competitor’s opinions, public polls and surveys, indirect evidence of use, manner and length of use

Moreover, the Office fails to see in the evidence a convincing depiction about which is the actual perception of the word mark by the relevant consumers in United Kingdom, Ireland and Malta.

In view of these circumstances, the Office is not persuaded that the mark applied for has effectively acquired a distinctive character within the meaning of Article 7(3).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the European Union Trademark No. 15027519 3DP is hereby rejected for all the goods and services applied for.

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.

Lizzeth GONZALEZ JIMENEZ