Refusal of application for a European Union trade mark

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

Alicante, 22/02/2017

Henkel AG & Co. KGaA

Joachim Renner

Henkelstr. 67

D-40589 Düsseldorf

ALEMANIA

Application No:	015924806
Your reference:	TM66082EU00/L
Trade mark:	Home Control
Mark type:	Word mark
Applicant:	Henkel AG & Co. KGaA Henkelstr. 67 D-40589 Düsseldorf ALEMANIA

The Office raised an objection on 31/10/2016 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 15/12/2016, which may be summarised as follows:

1. The Office erred in finding that the word ‘Control’ will be perceived as ‘managing … via wireless devices’ and that the mark ‘Home Control’ will be understood as ‘home automation’.

2. The word ‘Control’ is not descriptive of the goods for which the objection has been raised, since the goods are intended for repelling vermin and insects. It is most unlikely that the relevant English-speaking consumers would assume that they could control their homes using electrically operated insecticides. A native English speaker would never use or perceive the expression ‘Home Control’ as a reference to an insect or vermin exterminator.

3. The mark as a whole will not be immediately perceived as ‘managing the place where people live (via wireless devices)’, since the expression ‘home automation’ or ‘smart home’ is different from the expression ‘home control’. The expression ‘Home Control’ is not used in common parlance in the descriptive sense the Office put forward, and several similar trade marks including the expression ‘Home Control’, are registered for goods in Class 9.

4. The Office assessed the descriptiveness of the expression ‘HOME CONTROL’ in relation to goods in Class 9 in its opposition decision No B 1 467 663 and stated that the expression might be allusive for the goods in question.

5. Even if the Office’s translation of the meaning of the sign were correct, the sign would not convey any direct information about the kind and intended purpose of the goods for which the objection has been raised. The goods in question are electrically operated vermin and insect exterminators and their intended purpose is to destroy vermin and insects, and this is not apparent from the expression ‘Home Control.

6. As the relevant public will not immediately understand the expression ‘Home Control’ as referring to the nature, the intended purpose or any essential characteristic of the goods for which the objection has been raised, Article 7(1)(b) EUTMR is not applicable to the mark applied for.

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.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, ROBOTUNITS, EU:T:2003:315, § 34).

It is also 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).

Furthermore, 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).

The applicant argues that the word ‘Control’ will not be perceived as ‘managing … via wireless devices’ and that the mark as a whole will not be understood as ‘home automation’. Since the trade mark at issue is made up of two components, 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).

Contrary to the applicant’s argument, the Office does not state in the objection letter that the mark ‘home control’ will be understood as ‘home automation’; rather, it states that it will be understood by the relevant consumer as ‘managing the place where people live (via wireless devices)’. Although the meaning of the word ‘control’ does not necessarily include the meaning of ‘controlling by wireless devices’, the expression ‘Home Control’, as a whole, is commonly used in the relevant market to refer to ‘controlling the home electronically by mobile or wireless devices’. This is becoming ever more common because of rapid developments in information and communication technology, particularly in the field of home automation and smart home systems. Furthermore, a Google search shows that the expression ‘home control’ is used with a similar meaning to those of the expression ‘smart home’ or ‘home automation’ in relation to electronic systems.

https://www.aperio-av.co.uk/smart-home-control/

http://www.live-smart.co/smart-home/control-hubs

http://futurehome.co.uk/savant-home-control

https://www.electronichouse.com/tag/home-control/

http://assistive-technology.co.uk/home_control1

https://recombu.com/digital/article/ios-smart-home-control-system-valta-hits-kickstarter_M11724.html#

Accordingly, the expression ‘Home Control’ would be seen as merely descriptive, rather than as an indicator of trade origin in relation to the goods for which the objection has been raised. There is nothing about the expression ‘Home Control’ that might, beyond its obvious descriptive meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods at issue. The expression indicates an important characteristic of the goods in question, namely that the goods in Class 9, electric apparatus for repelling vermin and insects, downloadable application, computer software embedded on portable phones that allows users to download electronic program to active diffusers and/or electric apparatus for repelling vermin and insects, are for controlling the home most probably via mobile or wireless devices. This is exactly what the consumer seeks in using the goods at issue. Consequently, there is a clear and concrete connection between the trade mark and the goods in question, and as therefore mark conveys obvious and direct information regarding the characteristics and intended purpose of those goods.

The intended purpose of the goods in question, in particular, electric apparatus for repelling or attracting and destroying vermin and insects and computer software embedded on portable phones and/or portable computers that allows users to download electronic program to active diffusers and/or electric apparatus for repelling or attracting and destroying vermin and insects, is not only to destroy vermin and insects or to allow users to download an electronic program but also to manage the home via wireless or mobile devices.

The applicant claims that the relevant English-speaking consumers will not assume that they can control their homes using electrically operated insecticides and that a native English speaker would never use or perceive the expression ‘Home Control’ as a reference to an insect or vermin exterminator. The Office considers that it is self-evident that the goods at issue are designed to enable the user to control electric insecticides using a mobile phone or computer, and they are most likely to be part of home control system, since the goods are ‘electric repellents, mobile applications, and computer software that enable the user to activate electric insecticides’.

Furthermore, 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).

The applicant argues that the mark applied for will not be immediately perceived as ‘managing the place where people live (via wireless devices)’, since the expression ‘home automation’ or ‘smart home’ is different from the expression ‘home control’ and is not used in common parlance in the descriptive sense the Office put forward. The Office disagrees with these arguments, since the expression ‘Home Control’ is commonly used in a descriptive way in the relevant market, and is even used with a similar meaning to those of expression ‘home automation’ or ‘smart home’, as demonstrated above.

As regards the applicant’s argument that the Office assessed the descriptiveness of the expression ‘HOME CONTROL’ in relation to goods in Class 9 in an opposition decision and stated that the expression might be allusive for the goods in question, 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 and each case must be decided on its own merits. (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 should be also noted that the opposition decision cited was made about seven years ago, and the Office’s practice has changed to reflect the development of information and telecommunication technology.

The applicant argues that, since the mark ‘Home Control’ is not descriptive of the nature, the intended purpose or any essential characteristic of the goods in question, the objection under the Article 7(1)(b) EUTMR should be waived. As stated above, since the mark ‘Home Control’ provides clear and obvious information about the goods in question, it is irrelevant whether or not the mark is sufficiently distinctive to be registered as an EU trade mark. It is settled case-law that a mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Therefore, despite the applicant’s arguments, the Office remains of the view that the mark is descriptive of the goods for which the objection has been raised and does not qualify as a distinctive trade mark.

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 15 924 806 is hereby rejected for the following goods:

Class 9 Electric apparatus for repelling or attracting and destroying vermin and insects; downloadable application for mobile devices; computer software embedded on portable phones and/or portable computers that allows users to download electronic program to active diffusers and/or electric apparatus for repelling or attracting and destroying vermin and insects.

The application is accepted for the remaining goods:

Class 5 Sanitary preparations; disinfectants; preparations for repelling or destroying vermin and insects; insecticides; fungicides; herbicides.

Class 21 Diffusers for preparations for destroying vermin and insects.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

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