Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/12/2017

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	016980518
Your reference:	TM404828EM-JAF/JXM
Trade mark:	SIMPLE MODERN
Mark type:	Figurative mark
Applicant:	Real Value LLC 6608 North Western Avenue, Suite 296 Oklahoma City Oklahoma 73116 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/08/2017 pursuant to Article 7(1)(b) and (c) 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 23/10/2017, which may be summarised as follows.

1. The combination of the words ‘simple’ and ‘modern’ in stylized form, can function as a trade mark.

2. The mark is being used by the applicant.

3. The UKIPO has registered the said mark

4. The EUIPO has 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.

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).

The combination of the words ‘simple’ and ‘modern’ in stylized form, can function as a trade mark

The applicant holds that the combination of the words ‘simple’ and ‘modern’ together with the figurative elements contained within renders the mark distinctive. However the Office disagrees with this position. The stylization of the mark is only considered to be minimal and barely perceivable. The applicant argues that there is no space between ‘simple’ and ‘modern’, this is true, however this fact is not enough to endow the mark with the distinctiveness required to operate as a trade mark. The same can be said to the vertical line separating both words. The overall stylization of the mark, is not enough to endow the mark with the distinctiveness required to register a trade mark.

Insofar as the verbal elements are concerned, the Office believes that the mark is descriptive and non-distinctive for the goods applied for. The words will be perceived as a direct reference to the style of the products. Thus, describing the design and style of the products – being ‘simple’ and ‘modern’.

The mark is being used by the applicant

The applicant holds that the mark is already being used on the market. The applicant filed two pictures of two jugs and a teapot having the mark applied for included. The Office reiterates its position, that the mark is not distinctive enough to operate as a business identifier, as a trade mark. It simply highlights the style and the décor of the products, namely that they have a modern, yet a simple design.

The UKIPO has registered the said 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).

The fact that the mark has been registered in the UKIPO does not hinder the Office to reject the mark on the basis that the mark is descriptive and lacks distinctiveness. The EUTM system is independent of national trade mark systems.

The EUIPO has registered similar marks

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 marks referred to by the applicant cannot be equated to the case at hand because the marks cited are different from the mark applied for. Furthermore some of the marks cited by the applicant are rather old, for example EUTM 379 881 has been registered in 2009. The applicant cites a number of trade marks containing the words ‘simple’ or ‘modern’. These words are not non-distinctive per se, but one has to consider marks in their entirety. In the opinion of the Office the combination of ‘simple’ and ‘modern’ is descriptive and lacks distinctiveness, despite the presence of some stylization.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 980 518 - is hereby rejected for all the goods 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.

Alistair BUGEJA