Refusal of application for a European Union trade mark

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

Alicante, 09/08/2017

TAYLOR WESSING

Isartorplatz 8

D-80331 München

ALEMANIA

Application No:	016366701
Your reference:	2001486/17-HEW10.D1032-lal
Trade mark:
Mark type:	Three-dimensional
Applicant:	Hewlett Packard Enterprise Development LP 11445 Compaq Center Drive West Houston 77070 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/02/2017 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 29/05/2017, which may be summarised as follows:

1. There is no requirement for a mark to be complex for it to be registrable.

2. The Office makes a practice of registering simple geometric shapes; 15 such simple, comparable marks have been cited.

3. Contrary to the claim made by the Office, several of the goods are specifically aimed at a professional public with a high degree of awareness. This specialised public has been overlooked by the Office.

4. Furthermore, the sign will be recognised as a trade mark by all types of consumers, due to its distinctive nature (see point 7).

5. The three-dimensional sign in question does not resemble the shape of the goods for which registration is sought. The reference to the decision of 12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, is therefore not relevant.

6. Simple geometric shapes should be refused registration only in specific cases, where the shape is perceived as fulfilling a function other than that of a trade mark, for example a pentagon resembling a wine bottle label (22/05/2012, T‑585/10, Penteo, EU:T:2012:251). A mark cannot be refused registration only because it consists of a simple shape. The mark in question is three-dimensional and does not constitute anything but a fanciful shape that functions as a badge of commercial origin, considering the goods for which registration is sought.

7. The General Court decisions of 15/12/2016, T‑678/15 & T‑679/15, DEVICE OF A CRESCENT (fig.) + DEVICE OF A CURVED LINE WIDENING INTO AN ARC IN SHADES OF GREEN (fig.), EU:T:2016:749, show that even simple shapes may be accepted for registration. The mark in question is in a similar category to these two marks.

8. The sign in question is not a simple geometric shape, as claimed by the Office, but a three-dimensional mark with several fanciful features. It consists of both an inner and an outer rectangular shape around an opening; the outer corners are pointed and the inner ones are rounded. All the edges can be seen due to the opening in the middle, the edges are all chamfered, and the surface has a pattern that reflects light and creates a jewel effect. All these features make the mark as a whole fanciful and sufficiently distinctive to function as a badge of commercial origin. The objection should therefore be waived and the mark accepted for registration.

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)(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).

In response to the applicant’s submissions, the Office states the following:

1.

The Office agrees that complexity is not a requirement for a mark to be registrable; however, it maintains that a sign may be too simple to function as a badge of origin. 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). It is also settled case-law that a trade mark is considered distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the goods and services, and enables the relevant public to distinguish them, without any possibility of confusion, from those of a different commercial origin. A sign may fall foul of Article 7(1)(b) EUTMR because of its simplicity; see for example:

The finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 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. It suffices that the trade mark would enable the relevant public to identify the origin of the goods which it covers and to distinguish them from those of other undertakings (see judgment of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 27 and the case-law cited).

However, a sign which is excessively simple and is constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, for example, according to the case-law, in itself capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see judgment of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 26 and the case-law cited).

(05/04/2017, T‑291/16, Device of two drawn lines (fig.), EU:T:2017:253, § 29, 30)

The Office maintains that the mark in question falls within this category. See further explanation in point 8.

2.

As regards the applicant’s argument that a number of similar registrations have been accepted by the 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; 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).

In addition, the most comparable mark, in the Office’s opinion, EUTM No 381 152 (consisting of a single colour and a basic geometric shape), was filed in 1996. Since then, the Office’s practice and market realities have altered considerably and new guidelines have been implemented. The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in practice, commercial realities and up-to-date jurisprudence. Several of the figurative marks were registered a considerable while ago and since then the Office’s practice, especially relating to figurative marks, has substantially changed.

3.

The Office agrees that several of the goods for which registration is sought are aimed at a professional public with a high degree of awareness. The intention of the L110 letter was to communicate the fact that some of the goods target only a professional public whereas others target the average consumer.

Nevertheless, it must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. 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 where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

4.

The Office maintains that the sign is devoid of distinctive character for both the average and the professional consumer. See further explanation in point 8.

5.

The Office agrees that the mark does not resemble the shape of the goods for which registration is sought. One reference was made to the decision of 12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, in the L110 letter, and it is acknowledged that this reference was of little relevance. However, it is clear from the same letter that the objection was made on the basis of the mark consisting of an excessively simple shape that consumers will not remember or tie to a specific undertaking. The Office maintains this position.

6.

The Office maintains that a sign may be refused registration if it is excessively simple, even without fulfilling other functions, such as resembling a wine bottle label. Simple geometric devices such as circles, lines, rectangles or common pentagons are unable to convey a message that would be memorable to consumers, and will accordingly fail to be perceived as a trade mark. Signs composed of a basic geometric figure such as a circle, a line, a rectangle or a pentagon are not capable, as such, of conveying a message that consumers can remember, with the result that they will not consider them trade marks (12/09/2007, T‑304/05, Pentagon, EU:T:2012:271, § 22). The fact that such a shape is three-dimensional does not automatically mean that it is distinctive, as all types of trade mark must be considered within the meaning of Article 7(1)(b) EUTMR

Furthermore, the General Court has recently confirmed that simple signs in general, even if they are more than basic geometric shapes, may be too simple to be accepted for registration, namely in the case of EUTM application No 13 581 483 (figurative mark), which was refused registration, and this refusal was upheld by both the Board of Appeal and the General Court; in this regard, the Court stated the following:

In the present case, it is common ground that the sign at issue does not represent a basic geometrical figure. However, that circumstance, as such, does not suffice to support the view that it has the minimum distinctive character necessary for registration as an EU trade mark. There must also be certain characteristics of the sign that can be easily and instantly memorised by the relevant public and would make it possible for that sign to be perceived immediately as an indication of the commercial origin of the goods at issue (see judgment of 15 December 2016, Novartis v EUIPO (Representation of a grey curve and representation of a green curve), T-678/15 and T-679/15, not published, EU:T:2016:749, paragraphs 40 and 41 and the case-law cited).

In this regard, it should be recalled that the mark applied for represents a combination of two black lines, which the applicant acknowledges. Those black lines intersect by forming an acute angle. The first line is wide and in the form of an arc. The second line is smaller, slightly curved and placed above the first. It must be held that the mark applied for has no element that is visually eye-catching or likely to be remembered by the relevant public. Taken in its entirety, it presents no characteristic likely to create an impression sufficiently far removed from that produced by the mere combination of the two lines that form it so that it confers on the mark the minimum distinctive character necessary for its registration as an EU trade mark.

(05/04/2017, T-291/16, Device of two drawn lines (fig.), EU:T:2017:253, § 31-32)

7.

The Office disagrees that the cited General Court decisions are directly comparable; the Court clearly states that the mark is sufficiently distinctive as it is more than just a simple figurative device; it is similar to the letter ‘C’, for example:

In the present case, it is common ground that the signs at issue do not represent a geometrical figure. However, that circumstance, as such, does not suffice to support the view that they have the minimum distinctive character necessary for registration as EU trade marks.

There must also be certain aspects of the signs at issue which may be easily and instantly memorised by the relevant public and which would make it possible for those signs to be perceived immediately as indications of the commercial origin of the goods they cover (see, to that effect and by analogy, judgment of 29 September 2009, Representation of half a smiley smile, T-139/08, EU:T:2009:364, paragraph 31).

In that respect, it must be noted that, because they are reminiscent of both the letter ‘C’ and a crescent moon, and because the different shades of colour create a play of light and shadow and the curves that constitute them are of varying thickness and have a slight twist, the signs at issue display characteristics which are such as to distinguish them in the eyes of the public, and they thus satisfy the requirements set out in the case-law referred to in paragraph 41, for which reasons they are endowed with the minimum distinctive character necessary for registration.

(15/12/2016, T-678/15 & T-679/15, DEVICE OF A CRESCENT (fig.) + DEVICE OF A CURVED LINE WIDENING INTO AN ARC IN SHADES OF GREEN (fig.), EU:T:2016:749, § 40-42)

Whereas, the present mark is no more than an excessively simple rectangular shape, in the opinion of the Office, see further explanation in point 8.

8.

The Office acknowledges that the shape consists of both an inner and an outer rectangular shape around an opening, the outer corners are pointed and the inner ones rounded, all the edges can be seen due to the opening in the middle and these edges are chamfered. In the opinion of the Office, all these features are commonplace for a rectangular frame; the fact that it has both pointed and rounded corners is not surprising or unusual. Furthermore, the chamfered edges are visible only on close inspection of the device. With the applicant’s submissions in mind, the Office maintains that it is green. A mark must always be assessed as it is applied for; how it might look with light shining through it can have no influence on this decision. It is in any case unclear what the applicant means by a ‘jewel effect’: does it look like a piece of jewellery or is the colour reminiscent of jewellery, and, if so, what type? Moreover, the mark as applied for, , has no elements from which it could be inferred that it would give rise to such an interpretation on the part of the relevant public, other than its light green colour.

The features of the shape of the mark applied for, taken alone or combined with each other, are not distinctive: it is a basic geometric shape, a rectangular green frame. The relevant public would not perceive this as a badge of origin, as it is highly unlikely that the consumer would be able to remember and tie it to a specific undertaking. It follows that the basic shape in question cannot enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin. To fulfil the identification function of a trade mark, a rectangular frame should contain elements that differentiate it from other rectangles. The sole distinguishing characteristic of the present sign is that it is green. Such a nuance is not sufficient to ensure that the sign would be perceived by the relevant consumer as an indication of commercial origin.

Consequently, the Office maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. A minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

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 16 366 701 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.

Lars Paalgard SOYLAND