Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/12/2017

STUDIO TORTA S.p.A.

Via Viotti, 9

I-10121 Torino

ITALIA

Application No:	017202623
Your reference:	MC4484/mas
Trade mark:	LOCK STEADY
Mark type:	Word mark
Applicant:	SPY OPTIC Inc. 1896 Rutherford Rd. Carlsbad California 92008 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/09/2017 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, which may be summarised as follows.

1. The words LOCK STEADY have no direct and specific link with any of the goods claimed, nor immediately inform of any characteristic of them.

2. The applicant refers to the definition of “goggles” provided by Wikipedia. The applicant refers to the characteristics of goggles, which do not include “fixing characteristics”.

3. Hence the mark LOCK STEADY cannot be considered as directly descriptive of the goods of interest.

4. The expression evokes a fixing system, but is not descriptive.

5. The public, which is both professional and average, will be focused on the characteristics of the goods (size, protection, colours). None of these characteristics are described by the words LOCK STEADY.

6. Similar cases have been registered at EUIPO.

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.

1. ‘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).

2. For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

3. For a trade mark to be refused registration under Article 7(1)(c) EUTMR, ‘it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned’ (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

4. The words “lock steady” have a clear meaning in English. A steady thing is a firm thing that does not shake or move. A lock is a device that keeps things closed. Hence the combination means

5. Lock steady goggles are goggles that have a mechanism that fixes them on the consumer’s head firmly, closed. It is an essential characteristic for goggles to fit, to be fixed and locked at the head of the user. Users will immediately understand the combination as descriptive of essential characteristics of the goods.

6. 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).

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 1720623 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.

Claudio MARTINEZ MÖCKEL