Refusal of application for a European Union trade mark

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

Alicante, 31/05/2016

GoGet AB

Viktor Rydbergsgatan 10

SE-41132 Gothenburg

SUECIA

Application No:	015315724
Your reference:
Trade mark:	Room Display
Mark type:	Word mark
Applicant:	GoGet AB Viktor Rydbergsgatan 10 SE-41132 Gothenburg SUECIA

1. The Office raised an objection on 25/04/2016 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.

2. The applicant submitted its observations on 06/05/2016, which may be summarised as follows:

• The applicant suggests to narrow the list of goods to cover only “Digital signage; Software for digital signage”.

• The market within the EU for “digital signage” is a niche market where there among the intended public is a high recognition and distinctiveness factor for the applied mark “Room display”. This since the applicant has been selling software under this brand for over three years.

• The identical mark was approved by PRV (Sweden), see registration no. 2013/03573.

• Given this the mark fulfils the requirements on distinctive character.

3. 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

The Office maintains that the mark is devoid of any distinctive character for the goods “Digital signage; Software for digital signage”.

“Digital signage” uses various technologies to display information and other content such as images and videos. In relation to such goods the word DISPLAY is obviously devoid of any distinctive character and cannot be monopolized.

The mere addition of the word ROOM to the word DISPLAY does not add any distinctive character to the mark as a whole but merely informs the consumer that the goods in one way or the other are or relate to displays that are meant for a specific room, such as a meeting room.

The mark is a simple and banal informative message without trade mark character.

No proof has been submitted to show that the mark has become recognised among the intended English-speaking public.

As regards the Swedish registration 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).

4. 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 15315724 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.

Cecilia ÅLIN