Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 18/01/2018

IP21 LTD

Central Formalities Department

Lakeside 300

Old Chapel Way

Broadland Business Park

Norwich

Norfolk

NR7 0WG

REINO UNIDO

Application No:	016904112
Your reference:	T03832EM
Trade mark:
Mark type:	Figurative mark
Applicant:	Transparent Blonde LLC 1 Central Park West, Apt 41C New York New York 10023 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/08/2017 pursuant to Article 7(1)(b) 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 04/01/2018, which may be summarised as follows:

1. The subject mark is not a simple figurative element, simple geometric shape or figure, being a circle which also has a break in it. There is a graduation apparent in the width of the band forming the circle that expands and decreases from one open point of the circumference to the other. Therefore the overall impression created is more complex than that of a simple geometric shape.

2. The items being queried are part of the HOPECIRCLE range of jewellery products examples of which are shown.

3. The figurative design is not a commonplace figurative element commonly used in the jewellery industry. Therefore it would be capable of functioning as a trade mark and indicator of origin for the Applicant.

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.

General remarks

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).

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).

Specific remarks concerning the observations of the applicant

1. The subject mark is not a simple figurative element, simple geometric shape or figure, being a circle which also has a break in it. There is a graduation apparent in the width of the band forming the circle that expands and decreases from one open point of the circumference to the other. Therefore the overall impression created is more complex than that of a simple geometric shape.

The Office agrees that the mark is more than just a simple figurative element. However, as stated in the notice of refusal, in the context of the specified goods the mark would be perceived as a presentational feature of such items as bracelets, rings, earrings, necklace pendants and so on. There are no additional features to the mark that would indicate to the consumer of such items significance of a particular brand of jewellery.

In principle, the said representation is considered to be descriptive and/or devoid of distinctive character whenever it is a true-to-life portrayal of the goods and services or when it consists of a symbolic/stylised portrayal of the goods and services that does not depart significantly from the common representation of the said goods and services.

(Guidelines for Examination in the Office, Part B: Non-Distinctive marks, emphasis added).

2. The items being queried are part of the HOPECIRCLE range of jewellery products examples of which are shown.

The Office notes the examples of the products given. However, the images shows items of jewellery which are embellished, eg. with gems, etc. and have a larger gap in the circle than that of the mark in question. They are therefore noticeably different to the mark as filed.

3. The figurative design is not a commonplace figurative element commonly used in the jewellery industry. Therefore it would be capable of functioning as a trade mark and indicator of origin for the Applicant.

The Office disagrees with this argument. A circular shape is extremely common for jewellery items such as rings, bracelets and earrings, and is often used on necklace pendants. The feature of the break in the circle is not considered sufficient to imbue the mark with a quality that will be easily remembered by the consumer of such items as signifying a particular trader.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for EUTM No 016904112 is declared to be non-distinctive pursuant to Article 7(1)(b) for the following goods:

Class 14 Bracelets; Costume jewellery; Jewellery; Jewellery and imitation jewellery; Key rings and key chains (split rings with trinket or decorative fob); Necklaces; Rings.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Lance EGGLETON