Refusal of application for a European Union trade mark

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

Alicante, 21/10/2016

GROTH & CO. KB

Birger Jarlsgatan 57 B

SE-113 56 Stockholm

SUECIA

Application No:	015361116
Your reference:	V16-0488/HP
Trade mark:
Mark type:	Sound mark
Applicant:	Vattenfall AB * SE-169 92 Stockholm SUECIA

1. The Office raised an objection on 11/05/2016 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 01/07/2016, which may be summarised as follows:

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

• The Examiner does not distinguish between the different goods and services 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.

• It must be examined exactly what sound is applied for. The sign which consists of an intro/outro is distinctive enough and very characteristic for the Vattenfall commercials already shown on TV (an audio file is attached).

• The sign consists of a sequence of notes which cannot be considered to be simple. The notes are different in sound and the rhythm and intonation is highly recognizable by the consumers. Consumers are able to keep the sound in their mind and link it to the commercial origin of the goods and services. The Examiner has not given any explanation why the sound should not be recognized by consumers.

• Sound sequences as the one applied for are typically found in advertising and they are definitely catchy and retained in the memory of consumers. The applicant is not aware that the specific sound sequence is normally used in connection with the goods and services in question.

• Examples of similar EU trademark registrations are given, among others no. 8293557, 9205527 and 11770071.

• Even if the Office is not bound by previous decisions, it cannot neglect its duty and take into account other similar marks.

• 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.

• Evidence of the use of the mark as TV commercials is submitted (snapshots of YouTube videos, video files and information about the applicant´s campaigns during the period 01/01/2015 to 10/05/2016). The attachments show among others a total of 7,913 spots shown and that the total number of viewers has been 247,000,000.

• 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).

The acceptability of a sound mark must, like words or other types of trade marks, depend upon whether the sound is distinctive per se, that is, whether the average consumer will perceive the sound as a memorable one that serves to indicate that the goods or services are exclusively associated with one undertaking.

Consumers are not in the habit of making assumptions about the origin of goods and services in the absence of any graphic or word element, because generally a sound per se is not commonly used in any field of commercial practice as a means of identification.

The mark applied for is a very simple sound sequence consisting of only three notes and it lasts a couple of seconds at most. The sound is too short and simple to be easily memorised; it lacks any memorable melody, pattern or other effect. It certainly cannot be considered to be highly recognizable or catchy in any way.

Simple tunes used in advertising can certainly acquire distinctive character over time and be perceived as a means of identification. The evidence of how the mark has been used mainly shows exposure on Swedish television. Obviously that is no proof of the mark having acquired distinctiveness in the whole of the EU, which would be necessary for any trade mark lacking word elements.

The fact that the sound sequence is not normally used in connection with the goods and services in question is irrelevant. What matters is the perception of the consumer and the Office finds it highly unlikely that the mark has the capacity to prima facie be perceived as a distinctive trade mark.

As regards the argument that the Office does not distinguish between the different goods and services applied for, it is not necessary since the mark is considered non-distinctive in general, independent of the goods or services concerned. The mark does not indicate e.g. nature, intended purpose or any other characteristics of the goods and services in question; it is simply devoid of any distinctive character.

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. 8293557 was accepted on evidence of use while some of the other examples given contain more notes or are of a more complex nature.

There are also various examples of similar simple sound marks that have been refused registration, see among others EUTM applications nos. 014279509, 01286368 and 011893054.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No  015361116 is hereby rejected for all the goods and services 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