Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 04/10/2017

Niko Group nv

An De Vrieze

Industriepark-West 40

B-9100 Sint-Niklaas

BÉLGICA

Application No:	016938508
Your reference:	N17-014_5
Trade mark:
Mark type:	Sound mark
Applicant:	NIKO N.V. Industriepark West 40 B-9100 Sint Niklaas BÉLGICA

The Office raised an objection on 26/07/2017 pursuant to Article 7(1)(b) 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 08/09/2017, which may be summarised as follows:

• The tune subject to sound mark protection has been, together with a few other tunes, specifically created for Niko. It is the intention to use this tune (and the other tunes) in all future Niko products that need a sound indication or sound feedback, for example a doorbell, an access control system or an alarm sensor that detects movement.

• It is not the intention that the tune be memorised by the public. It is rather the intention that the public recognises the tunes as a ‘Niko tune’ and as being characteristic of Niko products. The applicant believes that the sound mark is capable of being recognised as a characteristic feature of the Niko products in Class 9 for which registration is sought. After products using the specific Niko tunes are in the market, the public will be able to recognise the Niko tunes and to associate these tunes exclusively with Niko products.

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.

On 08/09/2017 applicant amended the classification for the sound mark as follows:

Class 9 Access control devices, (electronic) buzzers, electric doorbells, electronic security systems for home network.

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

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

As stated in the notification dated 26/07/2017, the acceptability of a sound sign must depends on whether or not the sound is distinctive per se, that is, whether or not the average consumer will perceive the sound as a memorable one that serves to indicate that the goods (access control devices, (electronic) buzzers, electric doorbells, electronic security systems for home network) are exclusively associated with one undertaking.

In the present case, the sounds in the electronic file submitted constitute a piece of music that is too long to be easily and instantly memorised as an indication of origin.

Consumers are not in the habit of making assumptions about the origin of goods in the absence of any graphic or word element, because generally a sound per se is not commonly used in any field of commercial practice as a means of identification. Consequently, the sign will not enable the relevant consumers to recognise it as distinctive when they come to make a choice on the occasion of a subsequent purchase of the goods in question.

The applicant submits that it is its intention that the public recognise the tune as a ‘Niko tune’ and as being a characteristic of Niko products. The applicant believes that the sound mark is capable of being recognised as a characteristic feature of the Niko products in Class 9 for which registration is sought.

In this regard, the applicant has not submitted any documents that constitute evidence that the relevant consumer in the European Union, through familiarity with the sound mark on the market, has come to perceive it as a badge of origin, capable of distinguishing the goods of the applicant from those of other traders.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 16 938 491 is hereby rejected for all the goods claimed:

Class 9 Access control devices, (electronic) buzzers, electric doorbells, electronic security systems for home network.

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.

Moises Paulo ROMERO CABRERA