Refusal of application for a European Union trade mark

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

Alicante, 26/07/2016

TRADEMARKROOM LIMITED

29 Carlton Crescent

Southampton, Hampshire SO15 2EW

REINO UNIDO

Application No:	015201221
Your reference:	JC/TMR/SS/011003
Trade mark:	Smart Space
Mark type:	Word mark
Applicant:	Giovanni Maria Laporta 467 Whippendell Road Watford, Hertfordshire WD18 7PS REINO UNIDO

The Office raised an objection on 01/04/2016 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 18/05/2016 which may be summarised as follows:

• A request that the applicant’s specifications of goods and services is restricted to read as follows:

Class 6 Security window and door hardware locks for window and door systems. Metallic doors; door-locking devices; windows made of metal; window-locking devices; security grilles; security gates; security shutters; door fittings; window fittings, metal hinges and stays for doors and windows; safety fittings for windows and doors; anti-slam devices made of metal for windows and doors; finger guards for windows and doors; door and window parts; furniture and architectural fittings; metallic security bolts and hinges for double glazing systems; locks and latches; parts and fittings for all the aforesaid goods.

Class 7 Electric door openers, electric door closers, electric window openers, electric window closers.

Class 9 Computer hardware; sensors; electronic sensors; closed circuit television systems; alarms; alarms and warning equipment; motion detectors; video streaming devices; talk back audio system; backup power supply units; heating controls; mains electric plugs; plug sockets; electric and electric components; switches, electrical wiring and cables; speakers; computer software; downloadable computer software for project, document management and cloud storage services of electronic data; application software; downloadable software applications; computer programmes for the design, development, management and maintenance of corporate intranets.

Class 19 Window and door systems; building profiles fitments for windows and double- window and door glazing systems; non-metallic doors; non-metallic windows; non-metallic door panels; non-metallic door frames, non-metallic window frames; non-metallic fittings for doors, windows, gates or furniture; non-metallic security devices for doors, windows, gates or furniture; double glazing systems; building fitments for windows and double glazing systems; parts and fittings for all the aforementioned goods.

Class 20 Security hardware (not of metal) for window and door systems; non-metallic fittings for doors or windows; non-metallic security fittings for doors or windows; locks and latches; parts and fittings for all the aforesaid goods.

Class 37 Installation of windows and doors

Class 40 Glass, window, door material and profile manufacture; custom manufacture of electrical goods and hardware; electricity generation; energy production.

Class 42 Database development services; hosting of databases; computer programming services

• ‘Smart Space’ is an abstract set of words which when applied to the remaining goods and services gives rise to the relevant distinctiveness

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 waive the objection for the following goods and services:

Class 6 Security window and door hardware locks for window and door systems. Metallic doors; door-locking devices; windows made of metal; window-locking devices; security grilles; security gates; security shutters; door fittings; window fittings, metal hinges and stays for doors and windows; safety fittings for windows and doors; anti-slam devices made of metal for windows and doors; finger guards for windows and doors; door and window parts; furniture and architectural fittings; metallic security bolts and hinges for double glazing systems; locks and latches; parts and fittings for all the aforesaid goods.

Class 19 Window and door systems; building profiles fitments for windows and double- window and door glazing systems; non-metallic doors; non-metallic windows; non-metallic door panels; non-metallic door frames, non-metallic window frames; non-metallic fittings for doors, windows, gates or furniture; non-metallic security devices for doors, windows, gates or furniture; double glazing systems; building fitments for windows and double glazing systems; parts and fittings for all the aforementioned goods.

Class 20 Security hardware (not of metal) for window and door systems; non-metallic fittings for doors or windows; non-metallic security fittings for doors or windows; locks and latches; parts and fittings for all the aforesaid goods.

Class 37 Installation of windows and doors.

Class 40 Glass, window, door material and profile manufacture; electricity generation; energy production.

The objection is maintained for the remaining goods and services.

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).

In its submissions the applicant has argued that ‘Smart Space’ is an abstract set of words which when applied to the restricted specification of goods and services gives rise to the relevant distinctiveness

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who are to look at it in relation to the goods and services for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the meaning of the term ‘Smart Space’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the objectionable goods and services for which registration is being sought, namely that, as indicated in the initial notification, they are goods and services related to the provision of an intelligently designed environment (space) and/or to an environment (space) which incorporates interactive technology in order to enhance the experience of the user. It is, therefore, the Office’s view that the term ‘Smart Space’ is readily intelligible when taken in conjunction with the objectionable goods and services applied for, and viewed by the relevant consumer, who will see the phrase ‘Smart Space’ merely as a descriptor of a characteristic of the goods and services being provided rather than an indication of trade origin.

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 15 201 221 is hereby rejected for the following goods and services:

Class 7 Electric door openers, electric door closers, electric window openers, electric window closers.

Class 9 Computer hardware; sensors; electronic sensors; closed circuit television systems; alarms; alarms and warning equipment; motion detectors; video streaming devices; talk back audio system; backup power supply units; heating controls; mains electric plugs; plug sockets; electric and electric components; switches, electrical wiring and cables; speakers; computer software; downloadable computer software for project, document management and cloud storage services of electronic data; application software; downloadable software applications; computer programmes for the design, development, management and maintenance of corporate intranets.

Class 40 Custom manufacture of electrical goods and hardware

Class 42 Database development services; hosting of databases; computer programming services

The application is accepted for the remaining goods and services, namely:

Class 6 Security window and door hardware locks for window and door systems. Metallic doors; door-locking devices; windows made of metal; window-locking devices; security grilles; security gates; security shutters; door fittings; window fittings, metal hinges and stays for doors and windows; safety fittings for windows and doors; anti-slam devices made of metal for windows and doors; finger guards for windows and doors; door and window parts; furniture and architectural fittings; metallic security bolts and hinges for double glazing systems; locks and latches; parts and fittings for all the aforesaid goods.

Class 19 Window and door systems; building profiles fitments for windows and double- window and door glazing systems; non-metallic doors; non-metallic windows; non-metallic door panels; non-metallic door frames, non-metallic window frames; non-metallic fittings for doors, windows, gates or furniture; non-metallic security devices for doors, windows, gates or furniture; double glazing systems; building fitments for windows and double glazing systems; parts and fittings for all the aforementioned goods.

Class 20 Security hardware (not of metal) for window and door systems; non-metallic fittings for doors or windows; non-metallic security fittings for doors or windows; locks and latches; parts and fittings for all the aforesaid goods.

Class 37 Installation of windows and doors.

Class 40 Glass, window, door material and profile manufacture; electricity generation; energy production.

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.

Andrew CARTER