Refusal of application for a European Union trade mark

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

Alicante, 13/07/2016

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	015237911
Your reference:	M35601/EU
Trade mark:
Mark type:	Figurative mark
Applicant:	Marvel Characters, Inc. 500 South Buena Vista Street Burbank CA 91521 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 12/04/2016 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 01/06/2016, which may be summarised as follows:

1. The sign is distinctive within the meaning of Article 7(1)(b) and applicable case-law. (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; 27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39; 6/03/2003, T-128/01, Grille, EU:T:2003:62, § 33).

2. The Board of Appeal has confirmed the distinctiveness of figurative marks which are not a naturalistic reproduction of goods which may take the form of, or incorporate, a figure of a small boy (R2672/2014-2 of April 28, 2015) where same ‘departs significantly from that which the relevant consumers would consider a normal or standard representation of a boy’. Similar findings have been made by the Board in relation to stylised representations, namely cartoon figures of animals and goods in Class 28 (R1122/2013-2; R1123;2013-2; R1065/2013/2; R1066/2013-2; R2338/2013-2). The instant case should be decided in the same way as it differs from a faithful copy of a human. (The referred Board decisions are attached under Exhibit 1-6, and data sheets of EUTMs registered due to the principles outlined by the referred decisions are enclosed under Exhibit 7).

3. The Applicant further refers to other figurative devices which have been registered by the Office for relevant goods in Class 28 to include 87 figurative marks depicting humans, 116 device marks depicting fanciful animals which the applicant says are comparable (cited in the main body of the submissions and enclosed under Exhibit 8 and 9), and 442 further EUTM figurative registrations (enclosed under Exhibit 10).

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

It is settled case-law that ‘[a] sign’s distinctiveness 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’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

In order to ascertain whether the mark in question may be perceived by the public as an indication of origin, the overall impression created by the appearance of the mark must be analysed.

The Office concurs with the cases cited by the applicant but not their impact on the current mark. The Registrations cited feature stylised representations of a human or an animal or other cartoon figures, which are not comparable. The Office made it clear that its objection is based on the fact that the mark consists of a graphic representation of an action figure. The Applicant has not even attempted to show how this action figure is distinctive in any way in respect of action figures, much less established how its action figure constitutes a significant departure from commonplace action figures in a saturated market.

The only previous EUTM´s cited which appear demonstrably to be action figures are the ‘Superman’ figure (000038265) and the ‘Batman’ figure (000038174), both of which were registered in 1998. Market reality as reflected in the Guidelines has changed a lot since then. Therefore, not even the ‘action figures’ cited are remotely comparable. The Office is well aware of these figures through exposure and education. However, action figures are just that, commonplace toys. A super or amazing power or costume might well distinguish one human from another, but within the realm of action figures themselves, extraordinary powers or costumes are banal and a matter of course. Therefore, a simple graphic representation of an action figure, demonstrating a superhuman ability, having a muscular body or equipped with weapons is not at all capable of distinguishing such an action figure from other fantastic/al action figures by a competitor, in the absence of any further identifier or prior knowledge. That reasoning applies as much to a child or adolescent end-purchaser as it does to a parent or adult purchasing for someone younger.

This sign possesses many of the exact same features that have characterised action figures since they became readily available on the market, but which are much more prevalent now with the advent of related film franchises. The particular attribute or costume displayed may be amazing, but that just renders the figure to be a mere variation of a kind of toy displaying an extraordinary power, which is instantly recognisable. The consumer will simply see it a as being a slightly different version of a classic figure. It does not depart significantly from the norms and sectors of the action figure market. The variation is not such that it would be capable of performing an origin function per se.

Notwithstanding the comments of the applicant, the Office does not accept that the figurative mark is distinctive in respect of the relevant Class 28 goods within the meaning of Article 7(1)(b)  EUTMR. What was once distinctive in a particular market or sector may become a norm in that sector in time.

In this respect it should be noted that the Court has confirmed that ‘where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience’ 15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19)

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

The mark is banal in the context of the goods claimed. As previously stated:

‘The features of the mark applied for, taken alone or combined with each other, are not distinctive: the graphic representation depicts a muscular action figure, which resembles a flying superhero. Taken as a whole, the mark applied for only consists of a combination of features that are typical of the goods in question. The mark represented is not markedly different from various basic action figures commonly used in trade for the goods at issue, but is simply a variation thereof.

It cannot be assumed that the average consumer would tie this ordinary graphic representation to a particular applicant. The mark, taken as a whole, is not striking or unusual in relation to the objected goods, and does not provide the consumer with any information regarding the origin of the goods. It follows that the action figure represented cannot be sufficiently distinguished from other action figures in the sector, and will not enable the relevant public immediately and with certainty to distinguish the applicant´s goods from those of another commercial origin.’

Consequently, it is submitted that the registrations adduced by the Applicant have no probative value. The Office assessed the instant mark in a full and stringent manner and is not obliged to review decisions that are not comparable.

Furthermore, it is settled law that decisions concerning the registration of a sign which the Office and the Boards of Appeal are called upon to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, their legality must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67; 15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47-51).

For the same reason, a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of him/herself or someone else. Whether a sign may be registered as a European Union Trade Mark must be assessed solely on the basis of the Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Office.

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 15 237 911

is hereby partially refused in respect of action figure toys and artefacts which can take that appearance and goods which may be deemed to be ancillary to same, or which come under that heading namely:

Class 28 Games and playthings; action skill games; action figures and accessories therefor; children´s multiple activity toys; bath toys; bean bag dolls; collectable toy figures; dolls; doll clothing; doll accessories; doll playsets; electric action toys; inflatable toys; jigsaw puzzles; plush toys; puppets; squeeze toys; stuffed toys; toy action figures; toy masks; toy model hobbycraft kits; toy figures; water squirting toys; wind-up toys.

The application is accepted for the remaining goods and services.

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.

Volker Timo MENSING