Refusal of application for a European Union trade mark

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

Alicante, 05/10/2016

Andersen Partners

Jernbanegade 31

DK-6000 Kolding

DINAMARCA

Application No:	015292121
Your reference:	309547/cdp
Trade mark:	SOLAR
Mark type:	Word mark
Applicant:	Solar A/S Industrivej Vest 43 DK-6600 Vejen DINAMARCA

The Office raised an objection on 21/04/2016 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 21/06/2016, which may be summarised as follows:

1. A number of goods that are related to retail services in Class 35 are not associated with or do not utilise solar energy, and the list of services should be reviewed again by the Office.

2. The results of the internet search conducted by the Office are not relevant to the present case, since one of the results does not relate to areas within the EU, the goods and services in the results do not relate to those of the applicant and the word ‘SOLAR’ is used in the result as generic word for goods and services related to the installation of solar systems.

3. ‘SOLAR’ is a generic word, but it is not a generic word for retail and wholesale services. Therefore, it can distinguish the applicant’s services from those of others.

4. Several ‘SOLAR’ marks have been registered for Class 35 in Denmark, Germany, Benelux and Finland, and the trade mark applied for should also be registered by the Office.

5. The mark ‘SOLAR’ has acquired distinctiveness for the services in question and documents have been provided in support of this, namely an introduction of Solar group, annual reports, copies of web pages, etc.

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.

‘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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Shape of a product for washing machines or dishwashers’, paragraph 59).

It is also 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).

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

The Office will now examine each of the applicant’s arguments.

The applicant argues that many goods related to the retail services in Class 35 are not associated with or do not utilise solar energy and, therefore, the list of services to which an objection has been raised should be reconsidered. In this regard, the Office reviewed the list of services and maintains the objection, since the goods are deemed to be devices using solar energy, being used for solar energy utilisation systems or parts and fittings thereof.

As regards the applicant’s argument of the irrelevance of the internet search conducted by the Office, the Office partially agrees with the applicant in the sense that some of the results do not relate to areas within the EU and the goods in the results are not exactly the same as those that the applicant provides. However, since other results describe the use of the expression ‘solar retail’ within EU markets and the goods, such as solar panels and installations, overlap with or include the goods that the applicant retails, such as solar systems, solar lighting, heating and ventilation systems or devices and their parts, etc., the Office considers that the internet search results still relevant to this case. Furthermore, average consumers will not always associate the words ‘solar retail’ only with solar panels and installations.

The applicant argues that the word ‘SOLAR’ is not a generic word in relation to retail services and will be a distinctive sign in relation to the services for which registration is sought. In this regard, as described above, since this word is used in relation to the retailing of solar panels or to their installation in the relevant market in a descriptive way, it will also be perceived as descriptive in the same way by relevant consumers in relation to the retailing of solar lighting, heating and ventilation products, and their parts and fittings.

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). Furthermore, the examples of the national registrations are not relevant to this case, since the marks were registered for different goods and services from those of this application.

The applicant argues that the mark ‘SOLAR’ has acquired distinctiveness through use for the services for which registration is sought and submits evidence of acquired distinctiveness.

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. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, 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.

Third, 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 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.

Fourth, according to the case law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(See judgment of 10/11/2004, T 396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C 108/97 and C 109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C 25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C 299/99, ‘Philips’, paragraph 63.)

The applicant submitted documents including copies of the business registry, an introduction to the Solar group, websites of subsidiary companies and annual reports (2012-15) with figures of yearly revenues.

However, apart from providing brief information about the Solar A/S group and, figures of annual revenues and related statistics for the last four years, the applicant has not provided any firm evidence to support the acquisition of distinctiveness of the mark. That is, it is not clear that a significant proportion of the relevant public recognises the mark as coming from the applicant’s undertaking from the information provided about its relatively long history or annual revenues. Furthermore, the applicant did not provide evidence that the mark has acquired distinctiveness through use for all the services for which registration is sought and in other English-speaking countries, such as Ireland or Malta.

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 15 292 121 is hereby rejected for the services listed in Annex A.

The application is accepted for the remaining services:

Class 35 Advertising within the field of lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore services; Business management within the field of lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore; Business management consultancy within the field of lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore; Commercial or industrial management assistance within the field of lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore; Professional business consultancy within the field of lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore; Sales promotion for others within the field of lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore; Presentation of goods related to lighting, ventilation, electrical installations, cables, heating, plumbing, security, renewable energy, infrastructure, communication, marine and offshore on communication media for retail and wholesale purposes; Advisory services relating to promotional activities; Advisory services relating to sales promotion; Consultancy relating to advertising; Consultancy relating to the organisation of promotional campaigns for business; Consultations relating to business advertising; Consultations relating to business promotion; Marketing assistance; Professional consultancy relating to marketing; Direct mail advertising; Dissemination of advertisements; Dissemination of advertising for others; Dissemination of advertising for others via an on-line communications network on the internet; Dissemination of advertising for others via the Internet; Dissemination of advertising material [leaflets, brochure and printed matter]; Dissemination services of advertisement matter; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Distribution of advertisements and commercial announcements; Distribution of advertising announcements; Distribution of advertising material by post; Distribution of printed promotional material by post; Distribution of products for advertising purposes; Distribution of promotional matter; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of publicity texts; Distribution of samples; Customer club services, for commercial, promotional and/or advertising purposes; Customer loyalty services for commercial, promotional and/or advertising purposes; Loyalty card services; Loyalty scheme services; Management of customer loyalty, incentive or promotional schemes; Organisation and management of business incentive and loyalty schemes; Organisation, operation and supervision of an incentive scheme; Organisation, operation and supervision of customer loyalty schemes; Organisation, operation and supervision of loyalty schemes and incentive schemes; Organization, operation and supervision of sales and promotional incentive schemes; Arranging of demonstrations for advertising purposes; Arranging of displays for advertising purposes; Business merchandising display services; Demonstration of goods; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Demonstration of goods for promotional purposes; Organisation and conducting of product presentations; Presentation of goods on communication media, for retail purposes; Provision of space on websites for advertising goods and services; Arranging and conducting of exhibitions for business purposes; Arranging and conducting of fairs and exhibitions for advertising purposes; Arranging and conducting of fairs and exhibitions for business purposes; Arranging of displays for commercial purposes; Arranging of exhibitions for advertising purposes; Arranging of exhibitions for business purposes; Arranging of trade fairs; Conducting of trade shows; Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; Exhibitions (Conducting -) for advertising purposes; Exhibitions (Conducting -) for business purposes; Exhibitions for commercial or advertising purposes; Organisation and holding of fairs for commercial or advertising purposes; Organisation of events for commercial and advertising purposes; Organisation of exhibitions and events for commercial or advertising purposes; Organisation of exhibitions and trade fairs for business and promotional purposes; Organisation of fashion shows for commercial purposes; Organisation of trade fairs for commercial or advertising purposes; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; Promotion of fairs for trade purposes; Shows (Conducting business -); Advertisement for others on the Internet; Advertisement via mobile phone networks; Advertising; Advertising and marketing; Advertising in periodicals, brochures and newspapers; Advertising in the popular and professional press; Advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors.; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Advertising particularly services for the promotion of goods; Advertising, including on-line advertising on a computer network; Advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks; Advertising services provided via the internet; Advertising services provided via a data base; Advertising services for the promotion of e-commerce; Brand positioning services; Arranging of product launches; Arranging of presentations for advertising purposes; Arranging of competitions for advertising purposes; Arranging and placing of advertisements; Arranging and conducting marketing promotional events for others; Arrangement of advertising; Advertising via electronic media and specifically the internet; Advertising through all public communication means; Direct marketing; Computerised business promotion; Compilation of advertisements for use on the internet; Compilation of advertisements for use as web pages on the Internet; Compilation of advertisements; Business promotion; Online advertising via a computer communications network; Online advertisements; On-line advertising on a computer network; Market campaigns; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Preparation and realization of media and advertising plans and concepts; Preparation of advertisements; Preparation of marketing plans; Preparation of publicity publications; Preparation of trade publicity texts; Product launch services; Product marketing; Product sampling; Production of advertising films; Production of advertising material; Production of advertising matter and commercials; Production of visual advertising matter; Promotion [advertising] of business; Promotion services; Promotion, advertising and marketing of on-line websites; Publicity and sales promotion services; Publicity services; Radio and television advertising; Sales promotion; Administration relating to marketing; Administration relating to sales methods; Administrative processing of purchase orders; Administrative processing and organising of mail order services; Advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Advisory services relating to the purchase of goods on behalf of others; Organization of exhibitions for economic purposes; fleet management, maintenance management, machinery management, purchasing and/or material procurement for others, purchasing for others; None of the aforementioned services for or in relation to gas turbines, gas compressors or gas turbine packages except for the retailing of goods branded with other trademarks than SOLAR.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

Youngmin GOO

Annex A

Class 35 Retail services in the field of lighting products hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light and bulbs; Retail services in the field of products for ventilation hereunder fans, air handling units, air diffusers, air ducts, extraction arms, pipes, ventilators, hoods, hoses, tubes and dehumidifier; Retail services in the field of products for electrical installations hereunder switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters and enclosures; Retail services in regard to cables and connectors; Retail services in the field of products for heating hereunder generators, boilers, radiators, heaters, water heaters, oil tanks, tubes, pumps, valves, hydrants, hoses and pipes; Retail services in the field of products used for plumbing services hereunder tools, tubes, hoses, pipes, sanitary devices, toilets, sinks and valves; Retail services in the field of products to be used in solutions for renewable energy hereunder generators, heat pumps, solar heating, solar systems, photovoltaic and mounting systems; Retail services in the field of products to be used in infrastructure solutions, hereunder cables, enclosures and lighting poles; Retail services in the field of security products hereunder cameras, security cameras, security lighting, security alarms, security warning apparatus, security sensors, smoke alarms, smoke sensors, gas sensors, gas alarms, switches and relays; Retail services in the field of communications equipment hereunder antennas, switches, switchboards, cables, computers, mobile phones, smart phones and other portable and handheld electronic devices for recording, organizing, transmitting, manipulating and reviewing text, data, image and audio files; Retail services in the field of products for marine and offshore hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light, bulbs, switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters, enclosures, cables, enclosures and lighting poles; Wholesale services in the field of lighting products hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light and bulbs; Wholesale services in the field of products for ventilation hereunder fans, air handling units, air diffusers, air ducts, extraction arms, pipes, ventilators, hoods, hoses, tubes and dehumidifier; Wholesale services in the field of products for electrical installations hereunder switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters and enclosures; Wholesale services in regard to cables and connectors; Wholesale services in the field of products for heating hereunder generators, boilers, radiators, heaters, water heaters, oil tanks, tubes, pumps, valves, hydrants, hoses and pipes; Wholesale services in the field of products used for plumbing services hereunder tools, tubes, hoses, pipes, sanitary devices, toilets, sinks and valves; Wholesale services in the field of products to be used in solutions for renewable energy hereunder generators, heat pumps, solar heating, solar systems, photovoltaic and mounting systems; Wholesale services in the field of products to be used in infrastructure solutions, hereunder cables, enclosures and lighting poles; Wholesale services in the field of security products hereunder cameras, security cameras, security lighting, security alarms, security warning apparatus, security sensors, smoke alarms, smoke sensors, gas sensors, gas alarms, switches and relays; Wholesale services in the field of communications equipment hereunder antennas, switches, switchboards, cables, computers, mobile phones, smart phones and other portable and handheld electronic devices for recording, organizing, transmitting, manipulating and reviewing text, data, image and audio files; Wholesale services in the field of products for marine and offshore hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light, bulbs, switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters, enclosures, cables, enclosures and lighting poles; Computerized on-line retail services in the field of lighting products hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light and bulbs; Computerized on-line retail services in the field of products for ventilation hereunder fans, air handling units, air diffusers, air ducts, extraction arms, pipes, ventilators, hoods, hoses, tubes and dehumidifier; Computerized on-line retail services in the field of products for electrical installations hereunder switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters and enclosures; Computerized on-line retail services in regard to cables and connectors; Computerized on-line retail services in the field of products for heating hereunder generators, boilers, radiators, heaters, water heaters, oil tanks, tubes, pumps, valves, hydrants, hoses and pipes; Computerized on-line retail services in the field of products used for plumbing services hereunder tools, tubes, hoses, pipes, sanitary devices, toilets, sinks and valves; Computerized on-line retail services in the field of products to be used in solutions for renewable energy hereunder generators, heat pumps, solar heating, solar systems, photovoltaic and mounting systems; Computerized on-line retail services in the field of products to be used in infrastructure solutions, hereunder cables, enclosures and lighting poles; Computerized on-line retail services in the field of security products hereunder cameras, security cameras, security lighting, security alarms, security warning apparatus, security sensors, smoke alarms, smoke sensors, gas sensors, gas alarms, switches and relays; Computerized on-line retail services in the field of communications equipment hereunder antennas, switches, switchboards, cables, computers, mobile phones, smart phones and other portable and handheld electronic devices for recording, organizing, transmitting, manipulating and reviewing text, data, image and audio files; Computerized on-line retail services in the field of products for marine and offshore hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light, bulbs, switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters, enclosures, cables, enclosures and lighting poles; Computerized on-line wholesale services in the field of lighting products hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light and bulbs; Computerized on-line wholesale services in the field of products for ventilation hereunder fans, air handling units, air diffusers, air ducts, extraction arms, pipes, ventilators, hoods, hoses, tubes and dehumidifier; Computerized on-line wholesale services in the field of products for electrical installations hereunder switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, Electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters and enclosures; Computerized on-line wholesale services in regard to cables and connectors; Computerized on-line wholesale services in the field of products for heating hereunder generators, boilers, radiators, heaters, water heaters, oil tanks, tubes, pumps, valves, hydrants, hoses and pipes; Computerized on-line wholesale services in the field of products used for plumbing services hereunder tools, tubes, hoses, pipes, sanitary devices, toilets, sinks and valves; Computerized on-line wholesale services in the field of products to be used in solutions for renewable energy hereunder generators, heat pumps, solar heating, solar systems, photovoltaic and mounting systems; Computerized on-line wholesale services in the field of products to be used in infrastructure solutions, hereunder cables, enclosures and lighting poles; Computerized on-line wholesale services in the field of security products hereunder cameras, security cameras, security lighting, security alarms, security warning apparatus, security sensors, smoke alarms, smoke sensors, gas sensors, gas alarms, switches and relays; Computerized on-line wholesale services in the field of communications equipment hereunder antennas, switches, switchboards, cables, computers, mobile phones, smart phones and other portable and handheld electronic devices for recording, organizing, transmitting, manipulating and reviewing text, data, image and audio files; Computerized on-line wholesale services in the field of products for marine and offshore hereunder lamps, luminaries, indoor light, outdoor light, industrial light, flood light, emergency light, bulbs, switches outlets, socket outlets, cable trunking systems, Measuring instruments, Rules [measuring instruments], Chucks [parts of machines], Tilt hammers, Hand-held tools, other than hand-operated, hand operated tools, Drilling machines, electric hammers, Soldering apparatus, electric, DIN-rails, relays, converters, enclosures, cables, enclosures and lighting poles.