Refusal of application for a European Union trade mark

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

Alicante, 29/04/2016

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	015077712
Your reference:	M35358/EU
Trade mark:	MICROS
Mark type:	Word mark
Applicant:	MICROS Systems, Inc. 500 Oracle Parkway Redwood Shores California 94065 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 26/02/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 26/04/2016, which may be summarised as follows:

1. The concept of ‘MICROS’ is too vague

2. The Office has registered similar marks

3. The applicant has registered the same mark in other countries

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)(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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which 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 service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

The concept of ‘MICROS’ is too vague

The applicant holds that the word ‘MICROS’ is too vague for the goods applied for. However the Office is not convinced by this argument. The word ‘MICROS’ is the plural of the word ‘MICRO’ in English, and it is the masculine version in Greek. There is absolutely nothing distinctive about the mark. The Office reiterates its position that the mark is descriptive and non-distinctive. The fact that the word applied for is in its plural form or in the masculine form does not add distinctiveness to the mark. There is nothing vague about the mark, but rather the mark is considered to be clear and unequivocal as to its meaning in relation to the goods it covers.

In this regard the Office notes a very similar case decided by the Boards of Appeal on 16/02/2006, Case R 1016/2005-2, Microsim, paragraph 16:

‘MICRO’ can simply be referred to as anything of a reduced size. Indeed, The Shorter Oxford Dictionary, 1993 edition, even cites ‘microcomputers’ and ‘microprocessors’ by way of example of the use ‘micro’. It is therefore not beyond the realms of comprehension that, in relation to ‘SIM’ it would be perceived by the relevant consumer as a reduced size ‘SIM’ card. The Board does not accept the applicant’s argument that ‘SIM’ cards have got as small as they are ever going to get. The pace of change in the IT sector is so rapid that one should ‘never say never’. Micro technology acts as a motor for size reduction: the cards in question could get smaller in the Board’s opinion, even if that made them more difficult for humans to handle.

Likewise the Office believes that the word ‘MICROS’ is not distinctive for all the goods in class 9.

The Office has registered similar marks

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).

The applicant has registered the same mark in other countries

As regards the national decisions referred to by the applicant, according to case-law:

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 trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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’, paragraph 47.)

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 40).

The fact that the applicant claims that the mark has been registered in EU countries such as Estonia, Denmark and Portugal does not hinder the Office to raise objections based on lack of distinctiveness and descriptiveness.

The applicant also claims that the mark has been accepted in other countries which are not members of the EU, such as Taiwan, Tunisia, China, Bahamas and Brunei. As explained earlier the EUTM system is independent of other systems. Therefore the fact that the mark has been accepted in other territories does not impinge on the Office to raise objections.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 077 712 is hereby rejected for all the goods claimed.

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.

Alistair BUGEJA