Refusal of application for a European Union trade mark

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

Alicante, 28/09/2017

MEWBURN ELLIS LLP

City Tower

40 Basinghall Street

London

EC2V 5DE

REINO UNIDO

Application No:	016456907
Your reference:	ESH/FT7266695
Trade mark:	SEE HOW SIMPLE
Mark type:	Word mark
Applicant:	Monahan Products LLC Suite 3 60 Sharp Street Hingham, MA 02043 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/03/2017 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 17/07/2017, which may be summarised as follows:

1. The mark is distinctive

2. There is a degree of separation between the words and products

3. The importance of simplicity of the products is low

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). 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 mark is distinctive

The applicant holds that the mark applied for is distinctive. The office however believes that the mark has nothing which can be considered distinctive. The mark cannot function as a trade mark or as a business identifier because the consumers will not perceive the mark as a trade mark but as a simple slogan boasting about the simpleness of the device. One of the qualities of a product, including infant and children car seats is its ease of use. This easiness and simplicity of use is a quality which is well received in the market, and one can find a number of products which are touted to be easy to use.

Therefore the Office believes that the mark applied for is devoid of distinctiveness and thus cannot function as a trade mark.

There is a degree of separation between the words and products

The applicant holds that there is a degree of separation between the words and the actual products. The Office does not find this argument convincing. The fact that the mark has not been found to be descriptive does not automatically render the mark registerable. It is settled case law that Article 7(1)(b) and 7(1)(c) EUTMR are independent of each other and call for separate examination. It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 110).

The message conveyed by the sign is very clear to any English speaking consumer in the EU. The sign will be understood as a product which is very simple and straight forward to use.

The importance of simplicity of the products is low

The applicant holds that the importance of simplicity of the goods applied for is low. It observes that there is little complexity relating to children car seats. In addition the most important features of an infant car seat include the safety, the legality and the comfort of the said seat. Therefore the simplicity of the goods is not important.

The Office is not convinced by the applicant’s argument in this regard. The simplicity of the product is important and is indeed one of the features consumers look into when buying a product. Infant car seats require the installation usually with a seat belt to secure the infant car seat together with the seat, in addition on more regular basis infants and children will have to sit in their car seat and will have to be secured with a proper infant/children seatbelt. The features mentioned by the applicant (safety, legality and comfort) are equally important to the ease of use; however the Office believes that the simplicity and ease of use of the product are also important. It is an accepted notion that some products are easier to use than others, it is with this in mind that the Office believes that the mark applied for lack distinctiveness which is an absolute requirement for a trade mark to fulfil its function. The Office firmly believes that the mark ‘SEE HOW SIMPLE’ will not be perceived as a trade mark or a badge of origin by the relevant public, but simply as a promotional statement boasting about the simplicity of use of the product.

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 16 456 907 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.

Alistair BUGEJA