Refusal of application for a European Union trade mark

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

Alicante, 25/10/2016

BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT MBB - PATENTANWÄLTE RECHTSANWÄLTE

Postfach 10 71 27

D-28071 Bremen

ALEMANIA

Application No:	015580913
Your reference:	W30864EU
Trade mark:	MobileStudio
Mark type:	Word mark
Applicant:	Wacom Co., Ltd. 2-510-1 Toyonodai, Kazo-shi Saitama 349-1148 JAPÓN

The Office raised an objection on 13/07/2016 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 01/09/2016, which may be summarised as follows:

1. The Applicant does not agree that the definition of “studio” supplied by the Office supports the meaningful expression supplied by the Office. The expression as a whole is not found in the dictionary. The Office did not assess the mark in relation to the goods, some of which are intangible and therefore not “moveable”. Furthermore, it is not easy to move the larger, tangible goods specified. However, as all goods except real estate are potentially moveable, no information would be immediately clear for the addressed consumer. The mark is therefore not descriptive.

2. The mark is distinctive within the meaning of established case-law.

3. Similar marks have been registered.

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.

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.(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

Contrary to the statements made by the applicant, the definitions supplied show that

a “studio” may be a place of work, and that its meaning is not restricted to a

residential context. The work of recording and filming takes place in a studio, as

demonstrated. A studio is also the place where an artist or a designer or a

photographer carries out their work, as demonstrated. The Office correctly identified

all of the goods specified as being technological apparatus and closely related goods

all of which use or incorporate such workplace devices.

It is clear that all of the specified goods, which were homogenously grouped (in

accordance with case-law) by the office as workplace devices, are goods which (at

least potentially) pertain to either a recording studio or a filmmaking studio or visual

production in general. This has not been disproved by the applicant. The Court has

confirmed that where the same ground of refusal is given to a category or group of

goods (or services), the competent authority may use only general reasoning for all

of the goods concerned (judgment of 15/02/2007, C-239/05, ‘THE KITCHEN

COMPANY’, paragraph 38). This is clearly applicable to the case at hand.

The intangible goods e.g software are moveable by their very nature. Producers (for example) can use these products in tandem with lightweight, transportable versions of the hardware specified in order to create a studio anywhere, with ease. Therefore, the combined definitions make sense together in the context of the goods specified. There is no perceptible difference between the meanings supplied and the meaning perceived. No further corroboration is required. The mark is neither an unusual combination, nor is it fanciful. It is a basic word combination, entirely obvious and meaningful and as such cannot in any way be shown to be memorable in relation to the goods: A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The term “Mobile Studio” conveys a “sufficiently direct and specific” message which

the English-speaking consumer (average and professional) is capable of immediately

perceiving in relation to moveable technological apparatus, and closely related goods

which are capable of being used in a studio (judgment of 20/07/2004, T‑311/02,

‘LIMO’, paragraph 30).

It is irrelevant that the word conjunction as a whole may not be found in a dictionary, or that the word “studio” has a number of different permutations: For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

Given that the mark has a clear descriptive meaning in relation to the all of the goods applied for within the English-speaking territory of the EU, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Furthermore, the mark does not feature any additional element other than the message imparted, which could confer upon it the minimum degree of distinctiveness necessary for it to function as a badge of origin.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C‑104/00 P, ‘DKV’, paragraph 21). This is clearly applicable to the present case.

As the applicant is aware, marks are assessed as a whole. Therefore, the marks cited by the applicant are not comparable as they contain but one common element.

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 is hereby refused.

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.

Keeva DOHERTY