Refusal of application for a European Union trade mark

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

Alicante, 22/08/2017

pronovem Luxembourg

12 avenue du Rock'n Roll

B.P. 327

L-4004 Esch-sur-Alzette

LUXEMBURGO

Application No:	016471914
Your reference:	DT-REIN-0057/EU
Trade mark:	MEGA DOWN IMAGING
Mark type:	Word mark
Applicant:	Johnson Outdoors Marine Electronics, Inc. 678 Humminbird Lane Eufaula Alabama 36027 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 24/03/2017, 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.

2. After a two-month extension, the applicant submitted its observations on 24/07/2017, which may be summarised as follows:

• The mark has been accepted by the US and Canadian authorities.

• The mark MEGA DOWN IMAGING, and also the marks MEGA IMAGING and MEGA SIDE IMAGING are used as brands. Other companies use other brands for similar and identical products. Examples are provided.

• The applicant claims that the mark has acquired distinctiveness and provides the following information and material to support its claim:

Advertising material, press releases, price lists and articles in relation to a fish finding sonar.

3. 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)(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).

The Office cannot find other than that the mark ‘MEGA DOWN IMAGING’ as a whole is descriptive and devoid of any distinctive character.

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

Sonar depth fish finders are mounted on boats and these will give the users an underwater view of the area around the boat. The term ‘DOWN’ here refers to the fact that the goods give a view of the waters below the boat.

As shown in the Notice of grounds for refusal, the term ‘DOWN IMAGING’ has a specific meaning in the marine imaging field, namely “down-imaging concentrates high-resolution or CHIRP scans to create lifelike depictions of bottom contours, marine life and any vegetation or physical objects down to about 600 feet”.

Irrespective of the above definition, it will be obvious to the relevant consumers when viewing the mark in connection with the goods, and based on the individual meanings of the words ‘DOWN’ and ‘IMAGING’, that the term “down imaging” refers to imaging of an area below the water.

As for the word ‘MEGA’, it means “very large, important, or impressive; used to emphasize the size, importance, or quality of someone or something” http://www.macmillandictionary.com .

See also Collins Dictionary at https://www.collinsdictionary.com/ where the word is defined as “extremely good, great, or successful (adj.)”.

The term ‘MEGA DOWN IMAGING’ therefore simply indicates that the sonars at issue provide very good images of the areas below the boats on which they are mounted, both for fishing and navigation purposes.

The fact that other traders use other brands for similar and identical products is irrelevant. The relevant thing is whether or not the applied for mark is distinctive and can function as a trade mark.

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).

Acquired distinctiveness under Article 7(3)

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).

It must be shown that the mark had acquired distinctiveness among the relevant consumers at the time of the filing of the application. As the mark is in English, the relevant consumers are average consumers and professional consumers in the field of fishing.

When assessing in a particular case whether distinctive character has been acquired through use, account must be taken of factors such as, inter alia, the market share held by the mark, the intensity, geographical scope and duration of the use of the mark and the amount invested by the undertaking in promoting the mark. Proof that distinctive character has been acquired may, in particular, be found in statements made by chambers of commerce and industry or other trade and professional associations or in the results of surveys ((see judgment of 10/11/2004, T-396/02, ‘Shape of sweet, paragraphs 56-59).

Based on these criteria it is evident that the applicant has failed to show that the mark had acquired distinctiveness at the time of the filing of the application.

The applicant only filed advertising material, press releases, price lists and articles in relation to a fish finding sonar. 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 DOWN IMAGING’ has become distinctive in relation to the goods sought, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) has not been proven.

4. 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 16 471 914 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.

Anne-Lee KRISTENSEN