Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 08/05/2018

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	017164013
Your reference:	EW36037MKJS
Trade mark:
Mark type:	Figurative mark
Applicant:	Google LLC 1600 Amphitheatre Parkway Mountain View California 94043 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 06/09/2017 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.

On 02/11/2017 the Applicant requested an extension of two months to submit his observations in reply.

The Applicant submitted its observations on 08/01/2018, which may be summarised as follows.

1. The trademark applied for does not consist of an appearance of the goods and services for which registration is sought

2. As the trademark applied for does not consist of a representation of a product itself, the case law for shape marks is not applicable

3. The Office seems to insinuate that the trademark applied for consists of a feature of the goods and services for which registration is sought, namely the representation of a play button, which serves to start the playback of content

4. The consumers will immediately recognize the sign applied for as an indication of origin and not as a “method of use” in relation to the devices falling in class 9 and services in class 42.

5. The Office did by no means provide the necessary evidence showing that the cited examples of “red play buttons” are actually used descriptively

6. The Applicant further holds that the sign applied for is a fanciful combination of various figurative elements that indicates the origin of the products and services concerned

7. The Applicant points out similar EUTM registrations owned by the same Applicant

8. The Applicant holds that there are comparable EUTM registrations accepted by the Office

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).

As regards the Applicant’s first argument that the trademark applied for does not consist of an appearance of the goods and services for which registration is sought, the Office recalls that the sign consists of a combination of presentational features, namely a pictogram depicting a play button within a larger red circle as it was noted in the previous notification of 06/09/2017. It must be noted that this depiction of a play button is not markedly different from other basic pictogram representations of play buttons commonly used in trade in relation of the goods and services concerned. Therefore, the Office considers that it is merely a variation therefor in its view and that the sign at issue will not be able to fulfil its essential function of commercial origin.

As regards the Applicant’s next argument that as the trademark at issue does not consist of a representation of a product itself, the case law for shape marks is not applicable, the Office underlines that in the previous communication of 06/09/2018, there was no mention of case law regarding shape marks. Therefore, this argument is not relevant for the case at hand.

As regards the Applicant’s next line of argument that the Office seems to insinuate that the mark applied for consists of a feature of the goods and services applied for, namely the representation of a play button, which serves to start the playback of content, it must be bore in mind that, as already noted, that the Office is convinced that the mark consists indeed in the representation of a play button within a larger red circle. The Office finds that the figurative features comprising the sign do not endow the trademark applied for, as a whole, with any distinctive character.

As regards the Applicant’s further argument that the consumers will immediately recognize the sign applied for as an indication of origin and not as a “method of use” in relation to the devices falling in class 9 and the services concerned in class 42, the Office respectfully disagrees with this argument. The Office recalls that the appearance of the sign under examination cannot divert the attention of the relevant public from the descriptive message resulting from the depiction of a play button. Indeed, the sign applied for is simple, basic and so lacking in additional distinguishing features or striking figurative elements that it cannot carry out the ultimate function of the trade mark. The relevant consumer will therefore immediately understand the sign as a method of use in relation to the goods and services for which registration is sought, rather than an indication of commercial origin.

As regards the Applicant’s next argument that the Office did by no means provide the necessary evidence showing that the cited examples of “red play buttons” are actually used descriptively, the Office claims that the Court has confirmed that: where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

As regards the Applicant’s argument that the sign applied for is a fanciful combination of various figurative elements that indicates the origin of the products and services concerned, the Office strongly contests this argument. Furthermore, it must be noted that the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual, striking or fanciful’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

As regards the applicant’s argument that a number of similar and comparable 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).

However, the Office has proceeded to examine the marks cited by the Applicant in his brief of allegations and considers that these marks are not relevant in relation to the case at hand.

The Office further holds that all of the marks referenced by the Applicant contain sufficient figurative, decorative elements, such as elements of fancifulness, some original and striking colours, etc. to be seen by the relevant public as a badge of origin, which is not applicable in the case at hand.

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 011054822 is hereby rejected for all the goods and services claimed.

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.

Soledad PALACIO MONTILLA