Refusal of application for a European Union trade mark

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

Alicante, 17/05/2017

GILL JENNINGS & EVERY LLP

The Broadgate Tower

20 Primrose Street

London EC2A 2ES

REINO UNIDO

Application No:	016079105
Your reference:	RGP14459EM
Trade mark:	SONICSENSORY
Mark type:	Word mark
Applicant:	Sonicsensory, Inc. 1161 Logan Street Los Angeles California CA 90026 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial objection on 16/12/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for SONICSENSORY is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 18/04/2017, which may be summarised as follows:

1. The relationship between the goods in question and the sign is not direct and obvious, rather the sign is unusual and vague for the goods in question.

2. The sign is not actually used in descriptive manner in the market.

3. The sign may be interpreted differently by the relevant public.

4. Being creative or imaginative is not a requirement for the signs to be eligible for registration.

5. There are registered trade marks containing the word ‘SONIC’ which has already been accepted by EUIPO.

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 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).

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 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).

Since the trade mark at issue is made up of several components (a compound mark), 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 words ‘SONIC’ and ‘SENSORY’ separately and the combination of them as ‘SONICSENSORY’ are easily understandable by the relevant public regarding the characteristics of the goods in question namely, something which is sensitive to the sounds to be operated. As argued by the applicant, the Office accepts that software as a product cannot produce haptic output, however on the other hand any software can be used for providing haptic sensory output producing goods. Therefore the Office still maintains its position regarding the descriptive nature of the sign in relation to the goods in question.

As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; similarly 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). In the present case, the meaning of the combination ‘SONICSENSORY’ is not more than the meaning of the words ‘SONIC’ and ‘SENSORY’ separately. There is nothing unusual and striking for the combination ‘SONICSENSORY’ as to syntax or meaning considering the words alone.

Moreover, there is nothing vague or fanciful in this obviously meaningful statement. The mark is not supposed to cause customers to wonder or philosophise about the goods in question, but to simply conveys obvious and direct information regarding the kind and the characteristics of the goods in question (see by analogy BoA decision 07/07/2011, R 238/2011-4, DESIGNED TO DO MORE, § 23). English-speaking consumers will clearly, immediately and unambiguously understand the meaning of the sign ‘SONICSENSORY’ and perceive it exclusively descriptive for the goods in question, namely the goods which are sensitive to the sounds to be operated.

The applicant further argues that the sign ‘SONICSENSORY’ is not actually used in a descriptive manner for the goods in question in the market. The applicant further argues that the sign may be interpreted differently by the relevant public. 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.)

Moreover, as pointed out above, the sign in question need not already be known as a descriptive indication; it is enough if it can reasonably be expected to be understood as such in the future. Therefore, it is irrelevant whether or not the sign at issue is commonly used in the sector concerned (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46). It is settled case-law that: ‘the formulation “may serve” in Article 7(1)(c) EUTMR shows that a sign or indication must be refused registration if it may serve in trade to designate the characteristics of the goods, without its being necessary to show that the sign or indication is actually used or needed by the trade in question’ (16/06/1999, R 216/1998-1, DOUBLEMINT, § 12).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Contrary to the applicant’s arguments in its observations, 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, which is clearly applicable to the present case.

In relation to the applicant’s submissions concerning the absence of the sign in the trade in relation to the goods/services at issue, the Office would like to note that according to the settled case-law it suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the claimed goods or services, or a characteristic of the goods and services (see judgment of 17/09/2008, T‑226/07, ‘PRANAHAUS’, paragraph 36). It is not necessary for the Office to show that there is a present or future need of third parties to use or a concrete interest of third parties in using the term applied for (judgment of 04/05/1999, C‑108/97, ‘Chiemsee’, paragraph 35; and judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 61).

Moreover, the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question. The lack of prior use cannot automatically indicate such a perception’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

The fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (see judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 84).

The Office does not dispute the fact that the sign ‘SONICSENSORY’, taken in isolation and without any goods and services to use as a point of reference for assessment, might have various different meanings. However, the Office would like to emphasise that the mere fact that the word happens to have another meaning does not entitle the trade mark to be registered. It is not uncommon for a word to have more than one meaning, depending on the context, and this does not preclude a legitimate objection being raised under Article 7(1)(b) EUTMR.

As a final point, as stated by the Applicant in its observations, the Office shares the view that registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. In other words, no one can oblige the applicant to be creative to have a trade mark registration. However, this does not mean that, as understood by the applicant, the signs which have a specific level of linguistic or artistic creativity or imaginativeness will be registered as a trade mark. As it is stated by the Court of Justice, it suffices that the sign applied for should identify the origin of the goods protected thereby and distinguish them from those of other undertakings. This is not the case for the sign ‘SONICSENSORY’.

As regards the applicant’s argument that there are registered trade marks containing the word ‘SONIC’ has already 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, it is settled case-law that the Office must, when examining an application for registration of a European Union trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. However, the way in which the principles of equal treatment and sound administration are applied must be consistent with the principle of legality. Consequently, an applicant who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (15/11/2016, R 509/2016-1, AirFloss (fig.), § 31).

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 16 079 105 – SONICSENSORY is hereby rejected for the following goods:

Class 9 Electrical transducers used for providing haptic sensory output; electric actuators used for providing haptic sensory output; Computer software, namely, software development tools for use in the creation of entertainment media, audio recordings, audiovisual recordings, and video games; Computer software for use in enabling wearable devices to provide haptic sensory output.

Class 28 Wearable devices, namely, shoes, insoles, vests and headsets containing transducers for use in providing haptic sensory outputs while playing video games, watching audiovisual recordings, listening to music audio recordings, or experiencing other entertainment; modular floorboards containing transducers for use in providing haptic sensory output for video games, audiovisual recordings, audio recordings, and other entertainment experiences.

The application may proceed for the remaining goods.

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.

Kubilay ÖZDEMIR