Refusal of application for a European Union trade mark

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

Alicante, 11/01/2017

MAGUIRE BOSS

24 East Street

St. Ives, Cambridge PE27 5PD

REINO UNIDO

Application No:	015344401
Your reference:	T7184-CT
Trade mark:
Mark type:	Colour per se
Applicant:	Checkers Industrial Products, LLC 620 Compton Street Broomfield, Colorado 80020 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 06/06/2016 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.

Following an extension of the time limit, the applicant submitted its observations on 06/10/2016, which may be summarised as follows:

1. A limitation of the list of goods.

2. The reference to 25/09/2002, T‑316/00, Grün/Grau, EU:T:2002:225, § 33 and 34 is irrelevant for the assessment of the mark in question.

3. The refusal was a general refusal not specifying the reasoning for the specific goods.

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.

General remarks

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).

It must first of all be observed that colours or colour combinations per se are capable of constituting European Union trade marks in so far as they are capable of distinguishing the goods or services of one undertaking from those of another.

It does not, however, follow from the fact that signs of a particular category may in principle constitute a trade mark that all signs in that category necessarily possess distinctive character for the purposes of Article 7(1)(b) [EUTMR] with regard to a particular product or service.

(25/09/2002, T‑316/00, Grün/Grau, EU:T:2002:225, § 23 and 24).

Article 7(1)(b) EUTMR does not draw any distinction between different types of sign. However,

[t]he perception of the relevant public is not necessarily the same in the case of a sign consisting of a colour per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods it denotes. While the public is accustomed to perceiving word or figurative marks instantly as signs identifying the commercial origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which registration of the sign as a trade mark is sought. Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not, in current commercial practice, used as a means of identification. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking.

(06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 65).

As regards the registration as trade marks of colours per se, not spatially delimited, the fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could exhaust the entire range of the colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. Nor would it be conducive to economic development or the fostering of the spirit of enterprise for established traders to be able to register the entire range of colours that is in fact available for their own benefit, to the detriment of new traders.

It must therefore be acknowledged that there is, in European Union trade-mark law, a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought.

(06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 54 and 55).

‘In the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.’ (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 66).

1. A limitation of the list of goods

The list of goods has been limited following a request from the applicant and now reads as follows:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments and covers and protectors for the same; information technology and audiovisual equipment and covers and protectors for the same; telecommunication equipment and covers and protectors for the same; smart phones and covers and protectors for the same; covers and protectors for apparatus, and instruments and cables for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images and covers and protectors for the same; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; calculating machines, data processing equipment, computers and covers and protectors for the same; tablet computers and covers and protectors for the same; computer hardware; computer software.

2. The reference to 25/09/2002, T‑316/00, Grün/Grau, EU:T:2002:225, § 33 and 34 is irrelevant for the assessment of the mark in question.

The argument concerning the imprecise combination of colours based on 25/09/2002, T‑316/00, Grün/Grau, EU:T:2002:225, § 23 and 24, should not be disregarded. The applied for mark is a colour mark per se, as is the mark in the above mentioned judgement. As the ECJ established it is not clear from a mere mention of the colours (and their percentage ration) how they will be used on the goods in question which is why the Office has stated that the mark can be used in a variety of different formats not enabling consumers to memorize one particular usage and therefore not enabling them to repeat the purchase.

3. The refusal was a general refusal not specifying the reasoning for the specific goods.

The applicant argues that the Office has merely reasoned its refusal in relation to cables and parts of cables, and that the refusal must entail reasoning for all the goods applied for. It is of the applicant’s opinion that the Office has erred in its assessment by making a general refusal.

Firstly, the Office disagrees that its refusal in relation to other goods than cables and parts of cables has not been reasoned, and in the Office’s letter of 06/06/2016 it is submitted that the colours grey and yellow cannot be considered as unique or exceptional but as ordinary colours. Colours such as these are commonly used in the publicity and packaging of a wide range of consumer products and services. The colours are also commonly used on the products themselves. Therefore, there are clear indications that they could be used, in trade, for the presentation of the goods in question.

Secondly, it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is a group of goods and/or services that have a sufficiently direct and specific link to each other (judgment of 02/04/2009, T‑118/06, ‘ULTIMATE FIGHTING CHAMPIONSHIP’, paragraph 28).

It is the Office’s position that the following goods in Class 9 can be considered a single homogeneous category:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments and covers and protectors for the same; audiovisual equipment and covers and protectors for the same; telecommunication equipment and covers and protectors for the same; smart phones and covers and protectors for the same; covers and protectors for apparatus, and instruments and cables for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images and covers and protectors for the same; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; calculating machines, data processing equipment, computers and covers and protectors for the same; tablet computers and covers and protectors for the same; computer hardware.

As stated in the Office’s previous letter the combination of yellow and grey colours cannot be seen as unique or exceptional, nor will the way the colours are combined in the mark.

For the above goods, it is common to decorate the goods themselves or their packaging with colours and colour combinations, which is why the applied for colour combination would not be perceived as an indication of their commercial origin but merely as a decorative feature.

Furthermore, the following results of an internet search performed on the 11/01/2017 shows examples of a variety of the goods being decorated with grey and yellow colours (note that this is merely examples):

https://www.grainger.com/product/POWER-FIRST-Hinged-5-Channel-Cable-Protector-32RX20

http://www.willowoflondon.co.uk/products/caroline-stanbury-light-grey-and-yellow-striped-case1

http://www.tmart.com/High-Definition-720P-Compass-Sports-DV-Grey-Yellow_p194343.html?fixed_price=us_us&utm_source=sas&utm_medium=referral&utm_campaign=aff

http://www.alliancescale.com/product/industrial-weighing-solutions/portable-wheel-weighing-scales/

The following goods can be considered as a single homogeneous category:

Class 9: Information technology; computer software.

For these goods, even though the goods in themselves cannot have a colour, they are often provided on different kinds of hardware, e.g. a disc, and it must be seen as common that the disc itself or the packaging of such discs are decorated in colours. Therefore, the mark must be seen as non-distinctive for these goods as well.

The Office notes that the reasoning and the extracts regarding cables and parts of cables in the Office’s letter of 06/06/2016 was merely examples. In this regard 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). This was never done.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 15 344 401 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.

Cecilie Leth BOCKHOFF