Refusal of application for a European Union trade mark

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

Alicante, 15/05/2017

STUDIO TORTA S.p.A.

Via Viotti, 9

I-10121 Torino

ITALIA

Application No:	016140709
Your reference:	MC4124/dab
Trade mark:	IMMERSION
Mark type:	Figurative mark
Applicant:	Walter CAMENZULI FLAT B, 15/F., KELFORD MANSION, 168 HOLLYWOOD ROAD HONG KONG REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 11/01/2017 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 06/03/2017, which may be summarised as follows:

1. The trademark, it is composed by different elements figurative and denominative. In particular, the trademark consists of a circular image whose frame is composed of a combination of many flags that have over the all a decorative function. Thanks to this frame, the core of the trademark - that is the denominative element IMMERSION - becomes the more important element of the trademark applied for

2. The flags used on the frame represent the numbers from 1 to 12 according to the International maritime signal flag system.

3. The mark has been registered in national offices

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.

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

As stated in our previous notification in order for this objection to be overcome, the applicant would have to submit evidence from the competent authority of the state or organisation concerned, authorising the registration of the trade mark. The applicant has not provided with such an authorisation.

Therefore the arguments about the different components of the sign and the nature of them are irrelevant.

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 161 407 696 is hereby rejected for all the goods claimed.

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.

Agueda MAS PASTOR