Decision on the inherent distinctiveness of an application for a European Union trade mark (Article 7 EUTMR)]

Alicante, 23/03/2018

Forresters

Sherborne House

119-121 Cannon Street

London EC4N 5AT

UNITED KINGDOM

Application No:	17 204 504
Your reference:	T35396EM-SJW/jn
Trade mark:	E-TINT
Mark type:	Word mark
Applicant:	AlphaMicron Incorporated 277 Martinel Drive Kent, OH 44240 UNITED STATES OF AMERICA

The Office raised an objection on 26/09/2017, 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 in relation to some of the goods and services for which registration is sought, for the reasons set out in the attached notice of provisional refusal.

The applicant submitted its observations within the extended time limit, on 10/01/2018, which may be summarised as follows:

1. The examiner has failed to set out a reasoned objection in relation to each and every item of goods and services to which the objection was raised, which is required for the application to be refused. The examiner has cited no examples or references to substantiate that consumers would perceive the mark as having the meaning: ‘electronic - tint’.

2. The Office has already accepted for registration the applicant’s mark, ‘E-TINT’, (EUTM registrations No 7 496 417 and No 15 843 873), without raising any objection on absolute grounds. This means that the mark at issue meets the threshold of distinctiveness for registration as an EUTM.

3. The mark ‘E-TINT’ has been registered in the USA (US trade mark registration No 3 655 730), which is an English-speaking country.

4. ‘E-TINT’ is not a recognised term defined in dictionaries, rather, it is an expression created by the applicant to market the technology that it has created. In addition, ‘E’ has a number of different meanings.

5. The mark ‘E-TINT’ is a syntactically unusual juxtaposition of an abbreviation and a word separated by a hyphen. The mark is a lexical invention, not commonly used in everyday parlance.

6. The Office has previously accepted for registration trade marks starting with the prefix ‘E’ and containing a further arguably suggestive or descriptive word, finding them to be inherently distinctive. The applicant refers to a selection of those trade marks.

7. If the objection is maintained, the applicant requests, as a subsidiary claim, an opportunity to file evidence of the use and acquired distinctiveness of the mark.

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.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT.2, EU:C: 2004:532, § 25).

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

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product/service in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product/service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein).

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68).

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.

‘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).

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).

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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32.)

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102)

A word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

The Office has re-considered the mark applied for, — ‘E-TINT’, — in accordance with the abovementioned case -law, and, after giving due consideration to all the applicant’s arguments, maintains that it is not, prima facie, capable of functioning as a badge of commercial origin for the goods and services to which the objection was raised. The Office hereby reiterates that the mark is made up of the letter ‘E’, used as a prefix, and the noun ‘TINT’, both of which can be found in the dictionary, as shown below:

(information extracted from Cambridge Dictionary on 15/03/2018 at https://dictionary.cambridge.org/dictionary/english/e )

Accordingly, the Office maintains that the mark has a meaning that is the mere combination of the meanings lent by the words of which it is composed, that is, its meaning, as a whole, is nothing more than the sum of its parts, namely electronic -tint. Therefore, the relevant public, when encountering the mark E-TINT’ in relation to any of the goods and services to which the objection was raised would perceive it merely as conveying information regarding a characteristic thereof, namely that the goods are made with, or incorporate, an electronic -tint, and that the services concerned use such a special electronic -tint.

In response to the applicant’s first argument, it suffices to state that, according to settled case- law, where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 37). In the present case, the Office finds that the same reasoning applies to all the goods to which an objection has been raised, since all of them might be tinted using an electronic tint, and an electronic tint could be used in manufacturing optical devices, films and coatings that provide variable light transmittance.

The applicant refers specifically to its previous registrations of the mark ‘E-TINT’ as EUTMs, namely EUTM No 7 496 417 and No 15 843 873. On this point, firstly, it should be noted that the Office strives for consistency and application of the same registration criteria in every case. However, it is unfortunately inevitable that trade marks that are doubtful or even precluded from registration pursuant to Article 7(1)(b) and (c) EUTMR are sometimes registered. This is the reason the cancellation system exists.

Secondly, the principle of legality of administration requires that the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T‑106/00, STREAMSERVE, EU:T:2002:43, § 67).

In addition, it should also be emphasised that, according to the principle of legality, no person may rely, in support of its claim, on unlawful acts committed in favour of another (27/02/2002, T‑106/00, STREAMSERVE, EU:T:2002:43, § 67). This is equally applicable to those persons in whose favour a non-registrable mark has been registered as an EUTM.

The applicant also refers to its US national registrations of the mark ‘E-TINT’ (US trade mark registration No 3 655 730). On this point, it suffices to state that, according to settled 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).

Regarding the applicant’s fourth argument, the fact that a mark consists of an expression that is not a recognised term defined in dictionaries, is irrelevant. An examination under Article 7(1)(c) EUTMR has to be made on the assumption that the mark will be used with respect to the goods or services for which registartion is sought. If follows clearly from the text of Article 7(1)(c) EUTMR that it suffices if the mark ‘may serve’ to designate characteristics of the goods and services (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 33).

In addition, it is settled case-law that a sign must be refused registration pursuant to Article 7(1)(c) EUTMR 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). Furthermore, it is also well -established that the distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29), rather than independently of those goods and services. In this regard, the Office does not find any reason to justify the view that the average English-speaking consumer, when encountering the mark in relation to the applicant’s goods and services, would perceive it as containing the prefix ‘E’, used as an abbreviation for, for instance, ‘English’ or ‘Europe’, rather than for ‘electronic’.

Concerning the applicant’s fifth argument, the Office does not consider that the mark consists of “‘a syntactically unusual juxtaposition of an abbreviation and a word separated by a hyphen”’. Moreover, the Office considers that such juxtapositions are quite common in English, and are frequently used not only in trade (e.g. ‘e-commerce’), but also in common parlance (e.g. ‘e-mail’).

The applicant points out that the Office has already registered similar trade marks and refers specifically to the following trade marks:

• ‘e-TALK’ ( IR No 1 009 738, 12/06/2009);

• ‘E-Tour’ ( IR No 985 603, 28/10/2008);

• ‘E-SWITCH’ ( IR No 936 615 (figurative mark), 07/09/2007);

• ‘e-Manufacturing’ ( EUTM No 1 008 101, 07/12/1998);

• ‘E-CHECK°’ ( EUTM No 799 072, 16/04/1998);

• ‘E-TRAVEL’ ( EUTM No 26 278, 01/04/1996);

• ‘E-MOTION’ ( EUTM No 1 099 753, 09/03/1999);

• ‘E-VISA’ ( EUTM No 1 800 234, 01/08/2000);

• ‘E-smoke’ ( EUTM No 2 995 009, 03/01/2003).

In response to this argument, first, it should be recalled that, 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; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

Second, it is also well established that the descriptiveness and distinctiveness of a mark, as required by Article 7(1)(c) and (b) EUTMR must be assessed in the light of the circumstances of each case. In this regard, the Office emphasises that none of the trade marks to which the applicant refers is identical to the mark applied for. Moreover, the abovementioned list contains a figurative mark (‘E-SWITCH’, IR No 936 615, 07/09/2007), that is, a different-type of mark that is neither equivalent nor comparable to the mark at issue, regardless of the degree of its stylisation. In addition, the identification of previously registered word marks that contain, inter alia, a part of the mark at issue, namely the prefix ‘E’, cannot be considered relevant. It is settled case -law that a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole (15/09/2005, T‑320/03, LIVE RICHLY, EU:T:2005:325 § 81; 09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32; 20/11/2002, T‑79/01 & T‑86/01, Kit Pro/ Kit Super Pro, EU:T:2002:279, § 22).

As regards the applicant’s claim of acquired distinctiveness, once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

For all the reasons given above and in the notice of provisional refusal, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the mark applied for, ‘E-TINT’, is declared to be descriptive and non-distinctive for the English-speaking part of the European Union for the following goods and services:

Class 9 Eyewear; safety eyewear; protective eyewear; eyeglasses; spectacles; sunglasses; sports eyewear; goggles; safety goggles; protective goggles; motorcycle goggles; sports or recreation goggles; visors; safety visors; protective visors; motorcycle helmet visors; sports or recreation visors; head mounted visors; helmet mounted visors; headsets; virtual reality headsets, augmented reality headsets; audio visual headsets for playing video games; inserts, lenses, parts and fittings for all the aforesaid goods; liquid crystal optical devices, films and coatings which provide variable light transmittance and which are sold as an integral part of any of the aforesaid goods; liquid crystal optical devices; liquid crystal optical devices, films and coatings which provide variable light transmittance.

Class 12 Parts and fittings for vehicles, aircraft and marine vessels; windows for vehicles; sunroofs for vehicles; windscreens for vehicles; screens for vehicles; mirrors for vehicles; liquid crystal optical devices, films and coatings which provide variable light transmittance and which are sold as an integral part of any of the aforesaid goods.

Class 17 Variable light transmittance films; polymer films for use in manufacture; polymer films providing variable light transmittance; liquid crystal films providing variable light transmittance; anti-dazzle films for windows and other light transmitting or light reflecting structures or surfaces; anti-glare films for windows and other light transmitting or light reflecting structures or surfaces.

Class 19 Windows, screens, partitions, skylights, roofs, walls, blinds, all being parts for buildings; liquid crystal optical devices, films and coatings which provide variable light transmittance and which are sold as an integral part of any of the aforesaid goods.

Class 40 Custom manufacturing of liquid crystal optical devices, films and coatings which provide variable light transmittance; custom manufacturing of products incorporating liquid crystal optical devices, films and coatings which provide variable light transmittance.

The application may proceed for the remaining goods and services for which registration is sought.

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. 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.

Mirjana PUSKARIC