Refusal of application for a European Union trade mark

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

Alicante, 09/08/2017

DG CAPITAL LIMITED

Horace Hickson

Unit 1, Mill Industrial Estate

Flower Lane

Mill Hill, London Nw7 2hu

REINO UNIDO

Application No:	16 186 215
Your reference:	HMHDG1
Trade mark:	DESIGN GO
Mark type:	Word mark
Applicant:	DG CAPITAL LIMITED Unit 1, Mill Industrial Estate Flower Lane Mill Hill, London Nw7 2hu REINO UNIDO DG International Holdings Limited Unit 1, Mill Hill Industrial Estate, Flower Lane London NW7 2HU REINO UNIDO

The Office raised an objection on 13/01/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 09/02/2017, which may be summarised as follows:

1. The applicant started trading in 1978 and the mark ‘Go’ is used for the most widely distributed range of travel accessories in the world. Nowadays, there are over 300 accessories, designed in house by the London team. The applicant’s products can be found in over 18 000 retail locations across the UK and are extensively distributed in over 70 countries around the world.

2. The applicant registered EUTM No 4 120 952 ‘Design Go’ in the European Union in 2004 for goods and services in Classes 5, 8, 9, 11, 16, 17, 18, 20, 21, 22, 24, 25, 28, 31, 33, 34, 40, 42, 43 and 44; the registration lapsed in 2014.

3. The applicant submitted the following evidence:

1. Group structure spreadsheet – details all the companies and subsidiaries that are owned by the applicant (Design Go Limited, Design Go France SARL, Design Go Germany GmbH, Design Go Spain S.L., Design Go Inc. and Design Go Asia).

2. Evolution of ‘Go’ trademarks spreadsheet (March 2015) – outlines how the brand has developed over the years and provides details of the use of ‘Design Go’ in relation to products and packaging.

3. ‘Design Go’ trademarks spreadsheet – provides details of currently registered ‘Design Go’ marks across the world.

4. Units and values spreadsheet (01/01/1999-01/01/2013) – details of all sales of products bearing ‘Design Go’ logotypes.

4. The applicant stated that it can submit examples of packaging and has plenty of evidence to submit in relation to in-store displays seen by consumers across the world and bearing the ‘Design Go’ trade mark, if the Office requires.

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.

First, on 26/01/2017, the Office informed the applicant of the deficiencies found in the specification of the goods and services. On 03/07/2017, further to the applicant’s response, the Office confirmed the amendment to the classification of the goods and services to comply with the requirements of Article 28(1) EUTMR and Rule 9(3) EUTMIR. Therefore, although the classification issues have been resolved, for the goods subject to the objection on absolute grounds (the goods in Classes 9 and 20), the scope of the objection is not affected; therefore, the objection is maintained, including for the goods in these classes.

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The Office notes the applicant’s statements that trading started in 1978, that the mark ‘Go’ is widely used throughout the world, and that the applicant’s products can be found in over 18 000 retail locations across the UK and are extensively distributed in over 70 countries around the world.

With regard to the abovementioned statements, since the mark ‘DESIGN GO’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).

In response to the applicant’s argument that he registered EUTM No 4 120 952 ‘Design Go’ in 2004 for goods and services in Classes 5, 8, 9, 11, 16, 17, 18, 20, 21, 22, 24, 25, 28, 31, 33, 34, 40, 42, 43 and 44, it must be pointed out that the previous application was filed approximately 13 years ago by DG CAPITAL LIMITED, while the present application was filed by DG CAPITAL LIMITED and DG International Holdings Limited.

Further, from the group structure spreadsheet submitted by the applicant, the Office infers that the parent company is DG International Holdings Limited, while the other applicant, DG CAPITAL LIMITED, is a subsidiary company.

As regards the spreadsheet showing the evolution of the ‘Go’ trade marks submitted by the applicant, the Office notes that the expression ‘DESIGN GO’ was used in various figurative forms between 2000 and 2009, while the sign applied for is a word mark. Furthermore, the other marks that contain the element ‘GO’ are mostly figurative marks that include additional word elements, such as ‘TRAVEL EMPORIUM’, and are, therefore irrelevant to the present case. Moreover, from this spreadsheet, the Office was not able to identify the owner of the marks in question or the territory in which they were used.

The applicant also submitted evidence of currently registered ‘Design Go’ marks across the world. Having analysed this information, the Office notes that only EUTM No 8 511 677 ‘Design Go’ and the UK trade mark No 2 524 614 ‘Design Go’ are registered in the relevant territory for services in Class 35 by DG International Holdings Ltd.

From the units and values spreadsheet for the period 01/01/1999-01/01/2013 submitted as evidence, the Office could not draw any conclusion with regard to the relevant territory and the company that traded the products for which sales are recorded in the spreadsheet. In the table’s heading, the applicant mentions the use of the mark ‘DESIGN GO’ on products and packaging. However, from the categories of goods listed in the table and the descriptions thereof, the Office was not able to determine how the sign applied for was used.

With regard to the applicant’s statements that he is willing to submit examples of packaging and that he has plenty of evidence to submit in relation to in-store displays seen by consumers across the world and bearing the ‘Design Go’ trade mark, if the Office requires, it must be pointed out that, 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. Since the applicant did not expressly request the opportunity to prove the genuine use of the sign applied for in the relevant territory, the Office considers this submission a conditional request to be allowed the opportunity to submit evidence of acquired distinctiveness. Such conditional requests are inadmissible. The applicant’s rights to respond to the objection raised and to submit all the arguments and evidence of acquired distinctiveness it deems appropriate in defence of the registrability of its application have been duly safeguarded in these proceedings. The Office is not obliged to request additional evidence of use and to assess acquired distinctive character unless expressly requested to do so.

The applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived as a promotional laudatory message with the function of communicating a value statement, namely that the goods and services concerned incorporate advanced features or are the result of a process that makes them more suitable than similar goods and services, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods and services from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 186 215 ‘DESIGN GO’ is hereby rejected for the following goods and services:

EN-6	Padlocks; Metal padlocks; Padlocks of metal.
EN-8	Hand tools and implements (hand-operated); cutlery; side arms; razors.; Electric steam irons; Electric shavers; Nail clippers; Penknives.
EN-9	Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, such as battery chargers for small electronic devices; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus; Plug adaptors; Adaptors (Electric -); Power adaptors; Electric adaptors; Earphones; Electronic scales; Scales; Weighing scales; Binoculars; Radios; Radio alarm clocks.
EN-10	Ear plugs; Protective ear plugs; Ear plugs for sleeping; Noise reduction ear plugs; Ear plugs for protection against noise; Flight socks; Pillows (Soporific -) filled with down.
EN-11	Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.; Kettles; Electric kettles; Fabric steamers; Garment steamers; Hairdryers; Hand held electric hairdryers; Rechargeable torches; Pocket torches; Flashlights [torches]; Flashlights; Electric flashlights; LED flashlights; Electrically-heated mugs.
EN-18	Wallets; Leather wallets; Pocket wallets; Card wallets; Backpacks; Small backpacks; Backpacks [rucksacks]; Carrying cases for documents; Document cases; Tote bags; Grocery tote bags; Handbags; Travelling bags; Luggage bags; Airline travel bags; Travel bags made of plastic materials; Travelling bags made of imitation leather; Shoulder bags; Children's shoulder bags; Waist bags; Suit carriers; Protective suit carriers; Carriers for suits, shirts and dresses; Luggage straps; Lockable luggage straps; Straps for luggage; Luggage tags; Plastic luggage tags; Rubber luggage tags; Luggage tags [leatherware]; Umbrellas; Wash bags (not fitted); Wash bags for carrying toiletries.
EN-20	Furniture, mirrors, picture frames; Foot-rests; Inflatable pillows; Inflatable pillows [other than for medical use] for fitting around the neck; Stuffed pillows; Air pillows; Bath pillows; Necksupporting pillows; U-shaped pillows; Neck pillows [other than for medical or surgical use]; Garment hangers; Clothes hangers; Hangers for clothes; Clothes hangers, not of metal; Hand fans; Hand-held folding fans; Hand-held flat fans; Baby changing mats; Door stops, not of metal or rubber; Corner protectors of plastics.
EN-21	Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.; Wash bags (Fitted -); Toothbrushes, electric; Electric toothbrushes; Electrical toothbrushes; Non-electric toothbrushes; Toothbrushes [non-electric]; Toothbrush cases; Toothbrush containers; Lint rollers [adhesive] for removing lint from clothing; Lint rollers; Plastic bottles; Plastic water bottles [empty].
EN-25	Clothing, footwear, headgear.

The application may proceed for the remaining goods:

Class 05 Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.; First-aid kits; First aid kits; Filled first aid kits; Portable first-aid kits.

Class 16 Paper and cardboard; printed matter, catalogues; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists’ and drawing materials; paintbrushes; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.

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.

Roxana PISLARU