Refusal of application for a European Union trade mark

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

Alicante, 26/07/2017

MARKPLUS INTERNATIONAL

39 rue Fessart

F-92100 Boulogne-Billancourt

FRANCIA

Application No:	016475709
Your reference:	269P/09/A/EM/17
Trade mark:	LIGHT CHARGE
Mark type:	Word mark
Applicant:	Seiko Epson K. K. (also trading as Seiko Epson Corporation) 1-6, Shinjuku 4-chome, Shinjuku-ku Tokyo JAPÓN

The Office raised an objection on 27/03/2017 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.

The applicant submitted its observations on 24/05/2017, which may be summarised as follows:

1. The fact that each of the elements of a trademark, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character. In the case of the present application the words LIGHT and CHARGE cannot be considered as descriptive due to the numerous meaning of each word.

2. The mark cannot be considered as descriptive for goods covered by the application due to the fact that the public will not directly understand the meaning of the words ‘LIGHT CHARGE’ and will not be able to establish a concrete connection with the sign and the characteristics of the goods.

3. EUIPO have already registered similar trademarks in Classes 9 and 14, a list of which is presented.

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.

General remarks on Article 7(1)(c) EUTMR

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.

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).

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).

Specific comments concerning the observations of the applicant

1. The fact that each of the elements of a trademark, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character. In the case of the present application the words LIGHT and CHARGE cannot be considered as descriptive due to the numerous meaning of each word.

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), EU:T:2001:226, § 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

In the present case, the combination of the words LIGHT and CHARGE convey a clear and unambiguous descriptive message in relation to the goods claimed: that they can be charged by light, that is by solar power, the conversion of sunlight into electricity.

Given the growing prevalence of solar power to harness the power of sunlight over that of traditional batteries in wearable technology, the sign LIGHT CHARGE would merely be perceived as a desirable characteristic of the goods. That is, they can be worn without the user having to think about falling battery power as they will be receiving a constant source of charge from light from the sun.

With regard to the individual words LIGHT and CHARGE having multiplicity of meaning,

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, emphasis added.)

2. The mark cannot be considered as descriptive for goods covered by the application due to the fact that the public will not directly understand the meaning of the words ‘LIGHT CHARGE’ and will not be able to establish a concrete connection with the sign and the characteristics of the goods.

The Office disagrees with this statement and asserts that the relevant consumer, being reasonably well-informed and reasonably observant and circumspect, would reach a conclusion about characteristics of the goods conveyed by the mark with little intellectual effort. It is highly unlikely that, as the applicant claims, the consumer would regard the words as meaning “a low accusation” or “to order a lamp” or any other combination of meaning when confronted by the mark in relation to the goods. The likeliest scenario is that they will see the words as presenting the most obvious descriptive meaning in relation to such wearable goods – those having the capacity to be charged by light from the sun, ie. solar powered.

3. EUIPO have already registered similar trademarks in Classes 9 and 14, a list of which is presented.

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; and 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).

The Office also asserts that the marks cited are highly dissimilar to the subject application and therefore cannot be considered to be equally assessed to the mark in question.

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 016475709 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.

Lance EGGLETON