Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/11/2017

STAEGER & SPERLING PartG mbB

Sonnenstr. 19

D-80331 München

ALEMANIA

Application No:	016459703
Your reference:	K709_EUTM
Trade mark:	TouchFocus
Mark type:	Word mark
Applicant:	MITSUI CHEMICALS, INC. 5-2, Higashi-Shimbashi 1-chome, Minato-ku Tokyo 105-7117 JAPÓN

The Office raised an objection on 21/03/2017 pursuant to Article 7(1)(b) and (c) 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 20/07/2017, which may be summarised as follows.

1. A limitation has been requested and accepted, and a further limitation is requested to overcome the objection, by deleting certain goods and adding a disclaimer.

2. The combination of the words together would make the mark distinctive, because consumers will not separate the words.

3. Some of the listed goods cannot be touched, or goods that do not have a focus function.

Pursuant to Article 94 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.

The limitation

In response to a classification deficiency issued by the Office on 15/03/2017, the applicant has limited its goods by virtue of a letter dated 15/05/2017, which was accepted by the Office by virtue of a letter of 16/05/2017. The Office notes that this limitation does not affect the objection letter sent by the Office, save for one good: wearable devices. This good was deleted from the list of goods and services and therefore it will not feature in this letter.

In its submissions the applicant has requested the Office a further limitation of the goods together with what it calls a disclaimer. The applicant proposed the addition of the phrase ‘all the aforesaid goods excluding a camera focus function’. The Office notes that the limitation proposed by the applicant is not valid because it contains a negative limitation, in accordance with the principles set out in the Postkantoor judgment. The negative formulation does not reveal which types of goods exclude a camera focus function. It is clear from caselaw and practice that a specification of goods or services that is restricted by a condition that the goods or services do not possess a particular characteristic will in general not overcome an absolute grounds objection (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 114).

Therefore, in a nutshell, the Office will examine the arguments of the applicant in relation to the goods which were objected to on 21/03/2017, save for the good wearable devices, which no longer forms part of the specifications of the application.

The Office acknowledges the typo error cited by the applicant, the good ‘Opthalmic lenses’ now reads: Ophthalmic lenses. This error has been corrected.

The combination of the words together would make the mark distinctive

The applicant holds that the mark applied for is both distinctive and non-descriptive for the goods applied. The applicant argues that the Office has dissected the mark into ‘TOUCH’ and ‘FOCUS’, whereas the mark is ‘TOUCHFOCUS’. The Office does not find this argument particularly convincing. English speaking consumers in the EU, will immediately dissect the mark into two words, because it is natural to do so. 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), ECLI:EU:T:2001:226, § 59). The Office believes that the English speaking public in the EU, will immediately understand the mark without the need for mental steps. The meaning of the mark is clear and unequivocal – something that can be touched (physical or not) and can be focused. The fact that the words are conjoined does not confer on the mark distinctiveness, because the mark will still be dissected by the relevant consumers. Consumers are used to see conjoined words on the market, and therefore they are also used to dissecting the mark as may be necessary.

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).

Thus, the fact that the word ‘Touchfocus’ does not exist, does not imply that the word is distinctive for the goods applied for. The Office maintains that the mark is descriptive and non-distinctive.

Some of the listed goods cannot be touched, or goods that do not have a focus function

The applicant argues that some of the goods cannot be touched or focused, and thus the mark is distinctive and not descriptive. In this regard the applicant highlights certain goods which in its opinion cannot be subject to touching and focusing. For example, the applicant argues that ‘software’ or ‘lenses’ cannot be touched.

The Office does not agree with such interpretation. Image editing software can be used to touch and alter pictures, therefore although the users are not physically touching the software. Nevertheless they are using the software to touch up the picture. Therefore having this in mind, the word combination of ‘Touch’ and ‘Focus’, in relation to software will be understood by the relevant public as an image editing software which will be used to focus images, therefore such a word is also descriptive and non-distinctive for software items.

The applicant also points out other goods which it considers cannot be touched, such as lenses. The applicant argues that lenses are never touched. The Office notes that in its letter dated 21/03/2017, the Office cites a website (http://abc7news.com/archive/7436394/ ) where it is amply clear that there are already goods on the market, where wearers of eyeglasses can touch the frame, and the lenses will focus accordingly. Therefore, although one may not directly touch the lenses per se, however by the physical act of touching something (in this case the eyeglass) the lenses will focus. Therefore, by analogy, goods which contain lenses, or are lenses and are included in the list of goods such as Lenses for cameras, the mark will also be considered to be descriptive and non-distinctive. Just like in the case of software, the mark in question will be understood in a descriptive way, namely the goods are capable of focusing, just by a touch.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 459 703 is hereby rejected for the following goods:

Class 09 Optical glass; Cinematographic machines and apparatus; Photographic apparatus and instruments; Optical machines and apparatus; Optical devices; Optical apparatus and instruments; Optical lenses; Correcting lenses [optics]; Cameras; Lenses for cameras; Binoculars; Lenses for binoculars; Close-up lenses; 3D spectacle lenses; Spectacle lenses for 3D television broadcasting; Spectacle lenses for 3D movie theaters; Spectacles for 3D movie theaters; 3D spectacles; Multimedia projectors; Monocles; Lenses for monocles; Optical devices, namely, lenses and frames; Optical profilers; Optical profilers for sensors; Digital cameras; Digital audio and video recorders and players; Spectacles for 3D television broadcasting; Glasses for 3D television sets; Telephones; Cellular phones; Mobile telephones; Wearable portable telephones; Portable communications apparatus; Smartphones; Personal digital assistants; Wearable personal digital assistants; Smartglasses; Smart rings; Personal digital assistants in the shape of a watch; Head-mounted display apparatus; Computers; Computer peripheral devices; Computer programs; Computer software [recorded]; Computer software applications [downloadable]; Computer programmes [programs, recorded]; Computer programs [downloadable software]; Software and applications for mobile devices; Tablet computers; Laptop computers; Notebook computers; Wearable computers; Wearable computer peripherals; Eyeglasses; Eyewear; Spectacles; Electronic eyeglasses; Electronic eyewear; Electronic spectacles; Eyeglasses for medical purposes; Eyeglasses for vision correction; Medical eyeglasses for amblyopia; Eyeglasses for amblyopia; Functional enhancements and features incorporated into electronic eyewear; Functional enhancements and features incorporated into electronic eyewear, namely, optical and video capture by means of an integrated digital camera, connectivity with nearby electronic devices through the use of short wavelength wireless transmissions, display of and interaction with computer applications for mobile devices, sound amplification and/or interoperability with hearing aid devices to assist hearing, visual illumination by means of an integrated light source; Functional enhancements and features incorporated into electronic eyewear, namely projection of images by means of an integrated image projector, head-up display of information, images, and video, virtual display of information, images, and video; Fashion eyeglasses; Goggles; Contact lenses; Ophthalmic lenses; Sunglasses; Anti-glare glasses; Sunglass lenses; Sunglass lenses, semi-finished; Electronic goggles; Electronic contact lenses; Electronic sunglasses; Electronic sunglass lenses; Fitover glasses; Fitover sunglasses; Electronic fitover glasses; Electronic fitover sunglasses; Clip-on glasses; Clip-on sunglasses; Electronic clip-on glasses; Electronic clip-on sunglasses; Parts and accessories for spectacles; Spectacle temples; Spectacle frames; Eyewear frames; Eyeglass frames; Eyeglass lenses; Spectacle glasses; Spectacle lenses; Eyewear lenses; Eyeglass lenses [semi-finished]; Eyewear lenses [semi-finished]; Spectacle lenses [semi-finished]; Parts and accessories for electronic spectacles; Electronic spectacle frames; Electronic eyewear frames; Electronic eyeglass frames; Electronic eyeglass lenses; Electronic spectacle glasses; Electronic spectacle lenses; Electronic eyewear lenses; Electronic eyeglass lenses [semi-finished]; Electronic eyewear lenses [semi-finished]; Electronic spectacle lenses [semi-finished]; Pince-nez; Pince-nez mountings; Pince-nez cords; Optical frames; Wearable peripherals for mobile devices; Peripherals for mobile devices; Computer software; Computer peripherals; Peripherals for mobile devices for remotely accessing and transmitting data; Wearable computer hardware; Computer software for use on handheld mobile digital electronic devices and other consumer electronics; Network communication apparatus, namely, mobile and wearable digital electronic devices for the sending and receiving of text, data, audio, image, and video files across networks; Electronic communication equipment and instruments, namely, mobile and wearable digital electronic devices for sending and receiving of text, data, audio, image, and video files; Telecommunications apparatus and instruments, namely, speakers and microphones sold as component features of computers, headsets, mobile and wearable digital electronic devices for the sending and receiving of telephone calls, text messages, electronic mail, and other digital data, and for use in providing access to the internet; Apparatus for data storage, namely, mobile and wearable digital electronic devices for the storage of text, data, audio, image, and video files; Computer software for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files.

The application will be accepted for the remaining goods.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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