Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 06/10/2017

STUDIO TORTA S.p.A.

Via Viotti, 9

I-10121 Torino

ITALIA

Application No:	016522104
Your reference:	MC4264/ar
Trade mark:	ELEGANZA
Mark type:	Word mark
Applicant:	AWI LICENSING LLC Suite 1300 1105 North Market Street WILMINGTON Delaware 19801 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 13/04/2017 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 04/08/2017, which may be summarised as follows.

1. With regard to distinctiveness, the applicant claims that the mark ‘ELEGANZA’ should not be evaluated in the abstract, but assessed firstly in relation to the nature and the characteristics of the specific goods claimed in the application. In this case, ‘ceiling panels and acoustic ceiling panels’ do not amount to furniture or consumer goods, but to building materials as also claimed in the application. By way of showing a reproduction of a ceiling panel using the sign ‘ELEGANZA’, the applicant states that it is evident that the sign is perceived by the relevant public as a trade mark, rather than a mere indication of the characteristic of the material (‘that is elegant’), even though it has a meaning for an Italian consumer. Moreover, the goods are elements of a more complex product, that is, the celling. In consequence, when referred to ‘ceiling panels and acoustic ceiling panels and the other goods listed’, the word ‘ELEGANZA’ should not be considered as deprived of distinctive character.

2. With reference to the relevant public, the applicant differs from the Office’s analysis that ‘ceiling panels and acoustic ceiling panels’ are marketed to average consumers. In the applicant’s view, these goods cannot be installed by home owners themselves, but only by professionals with specialized skills. Therefore, the relevant public should be identified as the professional public and the degree of awareness will be high due to the nature of the goods in question. In consequence, the term ‘ELEGANZA’ will be clearly perceived as a trade mark.

3. In support of the above stated observations, the applicant lists different EU and Italian trade marks to show that the words ‘ELEGANZA’ or ‘ELEGANT’ or equivalent terms have already been granted by the EUIPO as well as by an Italian language speaking office such as a the Italian Patent and Trademark Office (UIBM). To name a few of the examples provided, see below:

• EUTM no. 5133939, ‘ELEGANZA’, registered on 06/06/2007 (renewed on 04/04/2016) in class 31.

• EUTM no. 11400488, ‘ELEGANT’, registered on 02/05/2013 in class 5.

• EUTM no. 11256112, ‘ELEGANT LIVING’, registered on 08/03/2013 in class 19.

• Italian TM no. 302011901955900, ‘PAROLA ELEGANZA’, registered on 07/12/2011 in class 33.

• Italian TM no. 302012902061289, ‘GOCCE D’ELEGANZA’, registered on 11/04/2013 in class 3.

• Italian TM no. 302012902112992, ‘SIGNORINA ELEGANZA’, registered on 31/07/2013 in class 3.

Moreover, the applicant owns the Benelux TM no. 1013725, registered on 13/07/2017 in classes 17 and 19 for the same precise goods as applied here.

In view of the above registered trade marks, the applicant sustains that the word ‘ELEGANZA’ is not deprived in itself of any distinctive character; otherwise, EUIPO and UIBM would not have granted such a significant number of trademarks equivalent to the trademark in question.

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).

In addition, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Based on the case law above referred, the term ‘ELEGANZA’ remains non-distinctive, as it is sufficient that the semantic content of the sign coveys to the consumer a promotional laudatory message emphasizing the positive features of the goods, namely, ‘ceiling panels and acoustic ceiling panels and with a good taste in style and design. Therefore, the fact the goods could be considered furniture o building materials, conforming or not a more complex product such ‘the ceiling’, and marketed solely to a professional public, is immaterial due to the information conveyed through the term ‘ELEGANZA’ by means of its literal meaning. In other words, the sign ‘ELEGANZA’ does not indicate the commercial origin of the goods in question, so it cannot 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).

‘In addition … references to national registrations conferred by Member States which do not have Italian as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

Therefore, the precedents from the Italian Office listed by the applicant are all the result of decisions granted by the UIBM or the Benelux Office, which are in no manner binding on the EUIPO’s own decisions. The registrability of the sign ‘ELAGANZA’ as a European Union trade mark must be assessed by reference only to the EUTMR. Moreover, none of the Italian TMs used as examples of registered trademarks where used in regard to classes 17 and 19. Lastly, it shall be stressed that in the particular case of the trademark owned by the applicant in the Benelux, none of the three Member States conforming the Benelux (Belgium, the Netherlands and Luxembourg) have Italian as their official language, where the sigh may well be distinctive without necessarily being so throughout the Union

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).

In consequence, with regard to the nineteen (19) examples brought forward by the applicant of registered trademarks at the EUIPO, with a similar wording to the applied sign ‘ELEGANZA’, the principle of equal treatment must be reconciled with observance of the principle of legality. However, to be in conformity to the EUTM should always prevail over any decision previously adopted by the Office, in accordance to the exercise of circumscribed powers and not as a matter of discretion. Moreover, every sign is examined by this Office based on its own merits and characteristics, Furthermore, as claimed by the own applicant, the sign has to be examined with regard to the nature and characteristics of the goods claimed in the application. Then, it shall be stressed that only one of the EUTM examples covered class 19 as the concerned sign ‘ELEGANZA’, but the rest referred to other goods and services.

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 016 522 104, ‘ELEGANZA’, is hereby rejected for all the goods claimed and listed below:

Class 17 Acoustic ceiling panels; Acoustic boards for ceilings; Acoustical panels

for buildings.

Class 19 Ceiling panels, not of metal; Ceiling Boards, not of metal; Non-metallic

building materials having acoustic properties.

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.

María Luisa ARANDA SALES