Refusal of application for a European Union trade mark

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

Alicante, 19/10/2016

GROTH & CO. KB

Birger Jarlsgatan 57 B

SE-113 56 Stockholm

SUECIA

Application No:	015318124
Your reference:	V16-0295/GNI
Trade mark:
Mark type:	Figurative mark
Applicant:	AB SKF Hornsgatan 1 SE-415 50 Göteborg SUECIA

1. The Office raised an objection on 03/05/2016 pursuant to Article 7(1)(b) 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 28/06/2016, which may be summarised as follows:

• The applicant strongly disagrees that the mark is devoid of any distinctive character.

• The Office does not distinguish between the different goods applied for. Criteria for determining a homogenous group are for example the nature, and intended purpose of the goods in question. It is not clear from the decision why all of the goods in the three classes claimed in total are supposed to form a homogenous group. No sufficient specific and direct link is recognizable among all the goods objected to.

• Examples of similar EU trademark registrations are given, among others no. 355909, 466995, 11151735 and 14489017, the latter registered on 12/01/2016.

• The abovementioned registrations cover goods in classes 4, 7 and 12. Even if the Office is not bound by previous decisions, it cannot neglect its duty and take into account other similar marks.

• It should also be noted that a trademark (no. 302012012641) identical to the one at issue has been granted protection in Germany.

• The examiner has not given sufficient weight to these previous EU and national registrations and considered them “with special care” as the case law demands.

• The mark applied for is a perfect example of a combination of colours. In this case the graphic representation has clearly indicated the proportion and position of the various colours. This kind of trade mark is only rejected when the colours are commonplace in the market concerned which is not the case here.

• It is true that a very simple mark consisting of simple geometric shapes is in principle unable to be perceived as a sign unless the mark has acquired distinctiveness through use. On the other hand, no requirement has been established for a certain level of creativity or artistic imagination on the part of the trademark proprietor. It is to be noted that the mark at hand has more than the minimum degree of distinctive character necessary. The structure of the colour combination draws the attention of the consumer.

• It should be taken into account that the trend today is an increasing use of a simple design. It must be possible for such marks to have a right to protection.

• The specific colour combination claimed is arbitrary and causes an outstanding visual impression to the users and consumers.

• A registration of the mark will not have any adverse effect on other traders.

• Although the mark may not be particularly imaginative, as a whole it is distinctive.

• The applicant refers to relevant case law.

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 (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).

In this case the Office cannot find that the mark as whole possesses a sufficient degree of distinctive character.

The mark applied for consists of two rectangles in different sizes in the colours blue and red.

Even if the rectangles are slightly separated with a white line in between, the perception is that of a two rectangles forming a square or that of a background on e.g. a packaging.

In the OHIM’s Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, 2.2.7 Simple figurative elements, it states that:

Simple geometric devices such as circles, lines, rectangles or common pentagons are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark.

The colours blue and red are colours that are commonly used in the publicity and packaging/decoration of a wide range of consumer products and services, and they are therefore not likely to be noticed and committed to memory as an indication of commercial origin.

See below examples on how the applicant is using the mark on packaging and in advertising:

In the absence of the distinctive element SKF (the applicant’s company name), a simple blue and red packaging or background would never prima facie be perceived and remembered as an indication of commercial origin.

While the public is accustomed to perceiving word or figurative marks immediately as signs identifying the commercial origin of the goods and services, the same is not necessarily true where the sign forms part of the external appearance of the goods or where the sign is composed merely of colours, backgrounds or patterns used to signal services.

As regards the argument that the Office does not distinguish between the different goods applied for, it is not necessary since the mark could be used on the packaging on all the goods applied for or when marketing the goods. The mark does not indicate e.g. nature, intended purpose or any other characteristics of the goods in question; it is simply non-distinctive for any goods.

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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Moreover, EUTM no. 355909 was accepted on evidence of use while some of the other examples given are either from way back in time when the Office had a more lenient approach to figurative marks or refer to other less common colours.

There are numerous examples of similar marks that have been refused registration, see among others case R1330/2008-1 “combination of the colours broom yellow and silver grey”; case R0482/2004-1 “Colour (juxtaposition of 2 colours)”; case R0558/1999-1 “other mark, colours green + grey” and case R1531/2015-1 DEVICE OF A WEAVY RECTANGLE WITH A BLUESTRIPE WITH GREEN COLOUR (fig.).

As regards the German decision 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.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

See also case R1750/2011-1 paragraph 20:

“As for the applicant's argument that 'TRACHEOSTOMA-FIX' had already been registered in Germany, as had the trade mark 'LARYNGOFIX' which was supposedly comparable in terms of content, and that the Community trade marks 'NECKFIX' and 'HUMIDOFIX' had been accepted, it must be noted that the Office is in principle not bound by previous registrations. However, it is precisely the object of the appeal proceedings to independently review the decisions of the examiners in the registration procedure, and so from this perspective alone there can be no question of the Boards being bound by precisely those authorities whose decisions they have to review. For legal reasons, under no circumstances can the applicant derive from this anything favourable to the eligibility for registration of the present application. The decisions with regard to absolute grounds for refusal are to be made with respect to the legal requirements and not with respect to individual earlier cases which are comparable. For legal reasons, earlier decisions cannot provide a basis for non-distinctive applications nevertheless to be allowed, since the principle of equal treatment is also subject to the reserve of the principle of legality. This applies equally to earlier decisions regarding national trade marks and Community trade marks (see judgment of 10 March 2011, C-51/10 P, '1000', para. 76-78)”.

To summarise, the Office does not find that the specific colour combination claimed is arbitrary and is likely to cause an outstanding visual impression to the users.

Simple designs are certainly often used in trade and a simple sign such as that of the applicant could acquire distinctive character over time and be perceived as a means of identification. No such evidence of use have been provided and as already mentioned, it is highly unlikely that the mark with nothing written on it, will be perceived as a trademark.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 015318124 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