Refusal of application for a European Union trade mark

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

Alicante, 26/09/2017

pronovem Luxembourg

12 avenue du Rock'n Roll

B.P. 327

L-4004 Esch-sur-Alzette

LUXEMBURGO

Application No:	16 471 906
Your reference:	DT-REIN-0056/EU
Trade mark:	MEGA SIDE IMAGING
Mark type:	Word mark
Applicant:	Johnson Outdoors Marine Electronics, Inc. 678 Humminbird Lane Eufaula Alabama 36027 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/03/2017 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.

Upon request by the applicant, the Office extended on 10/05/2017 the dead-line for submitting observations till 28/07/2017.

The applicant submitted its observations on 25/07/2017, which may be summarised as follows:

1. Distinctive character/indication of commercial origin

2. Similar marks registered by national offices

3. Acquired distinctiveness through use

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.

1. Distinctive character/indication of commercial origin

General remarks

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

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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).

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)

Applicant´s remarks

The applicant contended that while it calls its technology/products for ‘MEGA IMAGING’, ‘MEGA DOWN IMAGING’ and ‘MEGA SIDE IMAGING’, other competitors use other names for similar or identical products.

Therefore, the applicant concluded that this means that ‘MEGA [SIDE] IMAGING’ is truly capable of distinguishing the commercial origin of the goods at issue as the relevant, targeted public do know that different brands are being used by different companies.

Office´s comments

The goods at issue in Class 9 are sonar depth fish finders, namely, electronic apparatus used for marine navigation and fishing consisting primarily of sonar equipment and parts thereof.

Sonar depth finders are mounted on the outside of the boat´s transom with two sonar beams positioned on each side of the boat to use for shallow water fishing. These sonar depth finders give the users the possibility to scan the water from side to side of the boat.

Side imaging is a new technology in fish finding, using high-frequency SONAR waves to give a very detailed and life-like picture of the underwater life and world. It will be obvious to the relevant public when viewing the mark in connection with the goods, and based on the individual meaning of the words ‘SIDE’ and ‘IMAGING’ that the term ‘SIDE IMAGING’ refers to imaging or scanning from side to side of a wide surface of water.

The verbal element ‘MEGA’, meaning ‘very good or very big; - extremely good, or successful’ will in that context emphasize the very good quality of the goods at issue.

Therefore, the term ‘MEGA SIDE IMAGING’ will simply be perceived as an advanced sonar technology equipment which provides very good detailed or life-like images horizontally or from side to side of the underwater.

The fact that other competitors use other names for similar or identical products is irrelevant in this context. Moreover, in the Office´s notice of grounds for refusal as to the definition of ‘SIDE IMAGING’

www.fishfindersadvisor.com/buying-guide-for-si-fish-finders

it is noted that another company/competitor ‘HUMMINBIRD’ likewise is calling this technology ‘Side Imaging’.

For the reasons given above, the Office cannot but reach the conclusion that the mark ‘MEGA SIDE IMAGING’, seen as a whole is descriptive and devoid of any distinctive character.

2. Similar marks registered by national offices

Applicant´s remarks

The applicant contended that it had filed similar trade marks with national offices in the US and in Canada and that these trade marks were on their way to registration.

Office´s comments

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).

3. Acquired distinctiveness through use

General considerations

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The submitted evidence

In support of its contention the applicant submitted the following 54 listed pieces of evidence, consisting of articles, company/product information, catalogues, advertisements, pictures, etc.:

Preliminary remarks and assessment of the submitted material

In the present case, since the mark is composed of English words, the

applicant has to prove that the sign has become distinctive in Member

States of the European Union where English is an official language, i.e. in

United Kingdom, Ireland and Malta. Moreover, it also has to be proven that the sign has become distinctive in the EU territories where English is largely understood such as the Netherlands, the Scandinavian countries and Finland (26/11/2008, T-435/07, New Look, EU:T:2008:534, §23).

The burden of proof lies with the applicant which claims that the sign applied for has acquired distinctiveness.

Furthermore, the relevant period is the period prior to the filing date of the

EUTM application, namely before 16/03/2017.

Based on the afore-mentioned criteria it is evident that the applicant has failed to show that the mark ‘MEGA SIDE IMAGING’ had acquired distinctiveness through use at the time of the filing of the application.

From the submitted material - 54 pieces of evidence as listed above - 22 pieces originated from relevant EU Member States for the assessment of acquired distinctiveness through use, i.e. UK, Finland, Netherlands, and Sweden. The applicant only filed articles, catalogues, production information, advertisements, etc., in relation to fish finding sonar equipment. This is manifestly not enough.

Therefore, in an overall assessment, the Office cannot but conclude that the evidence presented is insufficient in order to demonstrate that in the eyes of the relevant public, the mark ‘MEGA SIDE IMAGING’ has become distinctive in relation to the goods, for which registration is sought, as a result of the use made of it. Consequently, acquired distinctiveness under Art. 7(3) EUTMR has not been proven.

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  16 471 906 is hereby rejected for all the goods claimed, namely:

Class 9 Sonar depth fish finders, namely, electronic apparatus used for marine navigation and fishing consisting primarily of sonar equipment and parts thereof.

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.

Finn PEDERSEN