Refusal of application for a European Union trade mark

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

Alicante, 16/02/2017

MANITZ, FINSTERWALD & PARTNER GBR

Postfach 31 02 20

D-80102 München

ALEMANIA

Application No:	015892201
Your reference:	S13102MEM-Sh/Km
Trade mark:
Mark type:	Figurative mark
Applicant:	STANDARDGRAPHENE CO., LTD. Daun-dong 413-ho Fine Chemical And Material Technical Institute, 15, Jonggaro, Jung-gu Ulsan 44412 REPÚBLICA DE COREA (LA)

The Office raised an objection on 14/10/2016 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 01/12/2016, which may be summarised as follows:

1. The word ‘GRAPHENE’ relates to the material itself and the word ‘STANDARD’ written before it does not designate a special kind of graphene, as there are no standards for graphene at the moment. Therefore, the verbal component of the trade mark applied for, ‘STANDARD GRAPHENE’, is a fanciful term that does not directly describe the goods and services for which registration is sought.

2. The trade mark applied for is a figurative mark containing a single yellow hexagon, which is not typically associated with the material graphene. This figurative element enhances the distinctiveness of the trade mark applied for.

3. The Office has already accepted several similar marks containing the word ‘GRAPHENE’, for example registrations No. 1 177 188 and, No. 1 267 958.

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. 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).

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.

In response to point 1) For registration of a trade mark to be refused, 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, emphasis added). The Office maintains its opinion that the mark applied for merely conveys the information that the goods and services for which registration is sought could inform the relevant consumer about the kind of the material graphene; therefore, the mark cannot indicate the commercial origin of the goods.

In response to point 2) The trade mark at issue is made up of several components but, for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office maintains its position that the figurative elements of the mark are minimal and do not endow the trade mark applied for with any distinctive character. The font, style and basic colours in the mark applied for lack originality and the relevant consumer would not have to make any effort to read it; therefore, the mark is devoid of any distinctive character. Furthermore, The Office maintains its opinion that the yellow hexagon is a basic shape (Decision of Boards of Appeal R0175/2000-4) and in this case only reinforces the message conveyed by the word ‘GRAPHENE’ ; therefore, it cannot indicate a trade origin.

In response to point 3) As regards the applicant’s argument that a number of similar registrations have been accepted by 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, the Office points out that International registrations No.1 177 188 and, No.1 267 958 have different verbal elements, and are registered for different lists of goods and services. Therefore, the comparison is not appropriate.

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. 15 815 211 is hereby rejected for the following goods and services:

Class 1 Graphene for industrial purposes

Class 35 Wholesale of graphene for industrial purposes, retail of graphene for industrial purposes, mediation of graphene for industrial purposes, sales agency of graphene for industrial purposes, sales arranging of graphene for industrial purposes.

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.

Petra CHARUZOVÁ

Enclosure: 4 pages