Refusal of application for a European Union trade mark

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

Alicante, 09/06/2017

N.J. AKERS & CO.

63 Lemon Street

Truro Cornwall TR1 2PN

REINO UNIDO

Application No:	016042715
Your reference:	R22074TMEU
Trade mark:	Smartbore
Mark type:	Figurative mark
Applicant:	Rigibore Limited 5 Guildford Road Industrial Estate Hayle Cornwall TR27 4QZ REINO UNIDO

This letter replaces the one issued on 08/06/2017. We apologize for any inconvenience this may have caused.

The applicant submitted its observations, after an extended deadline, on 05/04/2017, which may be summarised as follows:

1. The applicant limited the list of goods so that there is no link between the expression ‘SMARTBORE’ and the goods referred to in classes 7 and 9.

2. The applicant emphasises that the sales amounting to over £550,000 with the volume sales increasing in years, bears witness that the mark has been sold in the EU to a significant degree.

3. The applicant refutes that the figurative elements of the mark are minimal, claiming the yellow triangle to represent the recognisable, registrable elements of the mark on its own, which is set at an angle to represent a precision tool and correspond to other applicants’ registrations.

4. The applicant concludes by drawing the attention to granted registrations of trade marks with graphic stylisation of letter ‘O’ in Class 7 which have been considered to be sufficient.

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.

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 which underlies 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).

‘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 signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, 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. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office now replies to the applicant’s comments.

1. The applicant limited the list of goods so that there is no link between the expression ‘SMARTBORE’ and the goods referred to in classes 7 and 9.

The Office takes note of the limitation of goods as submitted by the applicant. Nevertheless, even though the relevant public might in this regard consist mostly of professionals with an extensive knowledge of bore machines, drilling tools, this does not in the least exclude the average consumer. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient even where the relevant public is specialist (12/07/2012, C‑311/11 P, Smart Technologies, EU:C:2012:460, § 48).

The Office notes that the relevant consumer will never perceive the mark alone but in relation to the goods and services for which registration is sought. Even when being confronted for the first time with the sign in question in the context of the goods at hand, the relevant public will not require any analytical effort to grasp its descriptiveness, which is based on the common meanings of its single words.

The verbal elements ‘SMARTBORE’ of the figurative mark applied for is nothing else than two plain words producing a correct and fully understandable meaning, where the term ‘SMART’ only indicates that goods relate to stack or stack which are programmable or automated or are otherwise capable of functioning without normal human input. In addition, ‘SMART is a very common term in relation to technology products, and it is a well-known fact that it is frequently used as an indicator for sophisticated products or services, mainly those products or services that operate using artificial intelligence or that have certain ‘intelligent additional functions’ (see also 11/12/2013, T-123/12, Smartbook, EU:T:2013:636).

2. The applicant emphasises that the sales amounting to over £550,000 with the volume sales increasing in years, bears witness that the mark has been sold in the EU to a significant degree.

The applicant failed to submit any evidence to prove that the trade mark for which registration is sought possesses inherent distinctiveness for the relevant public, as it claimed in its observation on several instances. Accordingly, the sign applied for would not allow the relevant public to distinguish the commercial origin of the goods from those of other undertakings providing identical or similar ones and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

3. The applicant refutes that the figurative elements of the mark are minimal, claiming the yellow triangle to represent the recognisable, registrable elements of the mark on its own, which is set at an angle to represent a precision tool and correspond to other applicants’ registrations.

The Office reiterates stylised elements of the mark at issue are not creating sufficiently lasting impression to distract the attention since they are being minimal in their nature. The use of colour blue in for a standard typeface with a tiny orange triangle piercing through letter ‘O’ do not suffice to render already descriptive mark distinctive. Moreover, consumers usually refer to a sign by its verbal elements, not by describing its figurative elements. Namely, these figurative elements do not render the sign distinctive or recognizable by consumer but are even considered as being purely decorative. Nevertheless, the word sequence ‘SMARTBORE’ will not go unnoticed by the public and should not be disregarded by the relevant public as the applicant claimed.

Furthermore, the simple conjoining of two words, the adjective ‘SMART’, standing for ‘programmed for some independent action, and the noun ‘BORE’ being ‘short for borehole’, altogether stand for precise drilling of a hole with a bore, precise boreholes, does not render the already descriptive sign distinctive. Consequently, the expression ‘SMARTBORE’ is regarded as a neologism that is descriptive (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 37); (12/01/2005, T-367/02‑T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31; and 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 26) since it is the result of the mere combination, which is grammatically correct, of two elements which are descriptive for the purposes of Article 7(1)(c) EUTMR.

Moreover, the Office believes that the recent case ‘SMARTLINE’ of the Court of Justice may be on a par with the case at issue, where the GC endorsed the finding that the English word “SMARTLINE”, composed of the words “SMART” and “LINE”, may be perceived with two meanings: as “intelligent line”, namely a line of goods capable to perform some operation independently, or as “elegant line” (§ 26). The GC added that, in the case at issue, the fact that the word “SMARTLINE” have different meanings is not decisive, since that word has manifestly and essentially a laudatory and promotional meaning in relation to the goods in question. the figurative elements of the sign are incapable of furnishing any distinctive element to the mark applied for. The red device is the most commonly used symbol for the ignition of electronic devices, which is one essential function of the goods at issue (§ 32-34). (see for analogy Case T-744/15 ; Puro Italian Style SpA, v EUIPO; Judgment of 11 December 2016).

3. The applicant concludes by drawing the attention to granted registrations of trade marks with graphic stylisation of letter ‘O’ in Class 7 which have been considered to be sufficient.

There is nothing in common binding these marks together as the mark at issue is a combined mark consisting of both verbal and figurative elements whereas the marks cited are plainly figurative ones.

The Office would like to draw applicant’s attention to an exhaustive list of rejected trade mark applications that contained the word ‘Smart’ accompanied by other non-distinctive or descriptive elements on absolute grounds confirming that they described goods/services endowed with certain ‘intelligent’, highly sophisticated solutions or mechanisms, in particular for goods in Class 9 (see 17/09/2015, R 582/2015-2, SMART SENSOR, § 17; 17/07/2015, R 42/2015-2, Smart Database; § 31-32; 28/07/2007, R 783/2007-2, SMART NITROGEN, § 14; 10/01/2012, R 1275/2011-4, SmartSafe, § 21; 25/04/2012, R 330/2012-2, SMART ENGINE, § 18; 06/03/2014, R 831/2013-1, Smart Register, § 19; 01/10/2013, R 128/2013-4, SmartTV Station, § 14; 18/02/2014, R 1378/2013-4, SMARTDOSE, § 10; 20/10/2014, R 1271/2014-4, smartkauf (fig.), § 14; 12/11/2014, R 1182/2014-1, smartPORT, § 18; 30/10/2014, R 1098/2014-2, SMART-ALERT, § 25; 09/11/2004, R 436/2004-1, SMART DEVICE MONITOR; 10/06/2016, R 130/2016-1, Smart Mirror Display).

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for some of the goods in the amended list, namely to reject the mark applied for for all goods as limited and specified in class 7 and to grant registration for all goods as specified in Class 9, as follows:

Class 9: Digital readouts; transmitters; data transmitters, digital transmitters, radio transmitters; battery chargers; parts and fittings for the aforesaid; all for use with machine tools.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 16 042 715 is hereby partially rejected for the all the goods claimed in class 7.

The application may proceed to registration for goods in class 9, as limited by the applicant in its observation.

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.

Gordana TRIPKOVIC