Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/01/2018

PLOUGMANN VINGTOFT A/S

Rued Langgaards Vej 8

DK-2300 Copenhagen S

DINAMARCA

Application No:	016924912
Your reference:	T61978EU01
Trade mark:
Mark type:	Figurative mark
Applicant:	Mettrum Ltd. 1 Hershey Drive Smiths Falls Ontario K7A 0A8 CANADÁ

The Office raised an objection on 14/07/2017 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.

After an extension of two months, the applicant submitted its observations on 23/10/2017, which may be summarised as follows.

1. The mark is distinctive.

2. The Office has previously registered similar marks.

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.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Distinctiveness

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

The applicant argues that the mark is distinctive. The relevant consumers would perceive the mark, consisting of six stacked rectangles in different colours, as a trade mark because of its colour combination and vertical form. To support its arguments, the applicant refers to case law 24/06/2004, C-49/02, blue and yellow, EU:C:2004:384, § 23 and 06/05/2003, C-104/01, orange, EU:C:2003:244, § 23 and EUIPO’s guidelines.

The Office does not neglect that a figurative mark consisting of a combination of colours may be perceived by the relevant consumer as an indication of commercial origin, however the Office does not consider this to be the case in relation to the applicant’s mark.

The mark applied for is a figurative mark consisting of six vertically stacked rectangles in the colours red, orange, purple, blue, green and yellow with a thin white line separating them.

For the assessment of the distinctive character of the sign for which registration is sought, even if it is necessary to consider it as a whole, that does not preclude prior examination of each of the sign’s individual features, namely the rectangles, the colours and the way that has been arranged, (09/07/2003, T-234/01, Orange und Grau, EU:T:2003:202, § 32).

Firstly, the figurative element, which consists of six rectangles, all of them of the same size, is an elementary, geometric shape which has no special features which might catch the consumer’s attention or which would be unusual in any way. It is apparent from the case-law that simple basic geometric shapes are devoid of any distinctive character per se (13/04/2011, T‑159/10, Parallélogramme, EU:T:2011:176, § 28, 30; 12/09/2007, T‑304/05, Pentagon, EU:T:2007:271, § 33). Such simple basic shapes are, for example, lines, circles, rectangles and pentagons (13/07/2011, T‑499/09, Purpur, EU:T:2011:367, § 25, 28). However, that does not mean that any other figurative sign would necessarily have original distinctive character (03/03/2015, T-492/13 & T-493/13, Darstellung eines Spielbretts, EU:T:2015:128, § 38). It is not decisive whether the sign is a circle, a rectangle or a pentagon, but rather whether the geometric figure illustrated is capable of conveying a message that consumers can remember (13/07/2011, T‑499/09, Purpur, EU:T:2011:367, § 36). This is not the case here. The public targeted would only see in the sign a simple, stack of coloured rectangles that resembles a decorative element, for example, on the goods, its packaging or facade of the buildings where the services are offered or a colour code differentiating goods in the product range.

Secondly, the six colours claimed for the rectangles are red, orange, purple, blue, green and yellow. Colours possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 38). In the present case, none of the colours claimed present a perceptible difference for the relevant public in relation to colours commonly used or capable of being used for the designated goods and services. Not even the colour combination contains any element which could attract the consumer’s attention. Finally, there is nothing to indicate that, by combining red, orange, purple, blue, green and yellow, which are not distinctive per se, the sign would be assessed as memorable, as stressed the applicant.

Thirdly, the fact that the coloured rectangles are arranged vertically with an insignificant white line between them is not distinctive per se because this is a recognised way of depicting the elements of the mark, namely logically and simply. Thus, the combination of coloured rectangles does not express a message that is far more complex and intriguing than other simple geometric shaped marks.

Taken as a whole the relevant consumers would not perceive the mark, consisting of six vertically stacked rectangles in different colours as an indication of origin for the goods and services claimed.

With regard to the number of colours used in the mark, the Office disagrees with the applicant’s contention that the more colours the trade mark contains, the more distinctive it is. On the contrary, the higher the number of colours is, the less distinctiveness is likely, because of the difficulty of memorising a high number of different colours and their sequence. That applies, even if the colours are in a predefined sequence and have nothing to do with a normal colour scaling.

It is questionable how the relevant consumers would be able to distinguish the applicant’s mark (as a whole) from marks of competitors, if they will not be able to remember the individual contained colours in the mark, as mentioned by the applicant. It may thus be concluded that consumers will be unable to perceive the combination of the claimed colours as a specific message regarding the origin of the goods and services.

With regard the applicant’s argument that the Office has not shown how the colours can be seen as the nature of the goods and services, or substantiated, or indicated which particular characteristics the goods and services this colour combination may be associated with, the sign would be perceived as either a purely decorative element or indicate the range of colours in which the goods are available, a colour code, for example, indicating the skin-type for cosmetic products, or a colour code indicating intensity or the level of cannabis in the goods. In its entirety, the geometric shape(s) and the use of colours are thus not so striking that it could convey any message that would remain in the consumer’s memory.

The applicant questions how the mark can be seen as a colour code indicating the degree of noxiousness. The Office has mentioned this it is notice of grounds for refusal.

As regards, the applicant’s claim that no similar colour combination is used on the market, the assessment is based on whether the relevant consumer would perceive the mark as an indication of commercial origin, and not whether identical or similar trade marks exists.

Similar marks previous registered

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).

Furthermore, the applicant’s examples of previous registered trade marks are colour per se marks and not figurative marks. Even through the assessment of the colours and colour combination in the two types of marks are similar, the use of the two types of marks are different and colour combinations acceptable for colour per se marks may not necessarily be acceptable for figurative marks.

For colour combinations, examination of distinctiveness is based on the assumption that goods or their packaging, or for examples facades of buildings or cars bear the combination of colours applied for, whereas the figurative mark may be used alone or on the packaging, but in the form applied for.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 16 924 912 is hereby rejected for all the goods and services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. 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 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.

Anja Pernille LIGUNA