Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 21/03/2018

URQUHART-DYKES & LORD LLP

Euston House

24 Eversholt Street

London NW1 1AD

REINO UNIDO

Application No:	017224213
Your reference:	T121630EM/AES
Trade mark:
Mark type:	Figurative
Applicant:	TELEVISION BROADCASTS LIMITED TVB City 77 Chun Choi Street Tseung Kwan O Industrial Estate Kowloon, Hong Kong REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 26/09/2017 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.

The applicant submitted its observations on 25/01/2018, which may be summarised as follows:

• The sign applied for is a fanciful depiction of an anthropomorphic two-armed, two-legged figure with animal and robotic features. All of the features of the figure are sufficiently stylised to differentiate it from the common notion of a robot. The eyes are large and are positioned on the face in a manner that could be said to resemble an insect such as a honeybee. At the top of its head are two antennae, which also evoke the idea of a honeybee. The mark applied for does not consist merely of a combination of features that the average consumer would perceive as nothing more than the shape of a ‘typical’ robot. The mark is not a commonplace depiction of any of the relevant goods that might take the form of, or otherwise incorporate, a generic robot shape. The argument that the trade mark lacks any distinctive character on the basis that the goods to which an objection has been raised in Classes 14, 21 and 28 could take the appearance of a robot is simply incorrect. It is clear from the foregoing that the mark applied for is an imaginary and fanciful depiction of a bionic bee-like figure. This depiction departs significantly from that which the relevant consumers would consider a normal, common or standard depiction of a robot.

• The Office has not provided any evidence to support the contention that robot figures of a similar appearance already exist on the market for the goods to which an objection has been raised in Classes 14, 21 and 28. It therefore cannot be said that the sign applied for is nothing more than a variation on a basic shape commonly used in trade for the goods at issue.

• The applicant refers to 15/12/2016, R 1468/2016-4, Device of a Cartoon Character.

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 waive the objection for the following goods:

Class 21 Mugs.

The objection is maintained for the remaining goods, namely:

Class 14 Goods in precious metals and their alloys or coated therewith; jewellery; imitation jewellery and ornaments; brooches; charms; cuff links; earrings; jewellery, decorative items and ornaments of imitation gold; necklaces; pins; key rings; trinkets; key chains; pendants; all included in Class 14.

Class 21 Glassware, porcelain and earthenware not included in other classes.

Class 28 Toys, and playthings; dolls; plush toys; toy figures; dolls’ clothes; dolls’ houses; puppets.

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). 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).

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).

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).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 31).

As regards figurative marks depicting the shape of the goods, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR.

The applicant states that the sign applied for is a fanciful depiction of an anthropomorphic two-armed, two-legged figure with animal and robotic features. However, the Office cannot distinguish any distinctive element in the sign applied for.

The sign, , is a figurative mark that clearly consists of a stylised basic outline of a robot or anthropomorphic figure with robotic features. Apart from the inclusion of features that are typical of a robot/anthropomorphic figure, namely a head, eyes, two arms, two legs and a torso, the depiction does not contain any distinguishing elements, such as specific design features, a logotype or a particular combination of colours. Therefore, when used as a figurative mark in connection with the goods, the relevant public will immediately perceive the mark as conveying the message that the contested goods in precious metals and their alloys or coated therewith; jewellery; imitation jewellery and ornaments; brooches; charms; cuff links; earrings; jewellery, decorative items and ornaments of imitation gold; necklaces; pins; key rings; trinkets; pendants (Class 14); glassware and mugs (Class 21); and toys, and playthings; dolls; plush toys; toy figures and puppets (Class 28) are goods in the form of a robot/anthropomorphic figure. Regarding dolls’ clothes; dolls’ houses (Class 28) the mark will be perceived as indicating that the goods are linked to toys, playthings; dolls; plush toys; toys figures and puppets in the form of a robot/anthropomorphic figure.

As the relevant public will make an immediate and specific link between the mark applied for and the goods concerned, the mark will not be recognised as a distinctive sign; rather, it will be perceived as providing information about characteristics of the goods, and, consequently, the figurative mark must be seen as clearly related to the appearance of the goods for which registration is sought.

The sign in question does not depart significantly from the norm or customs of the sectors of the goods for which registration is sought in Classes 14, 21 and 28. As already stated, the mark merely depicts a robot/anthropomorphic figure and its typical features, and does not have any characteristic elements or eye-catching features likely to confer on the sign the minimum degree of distinctive character that would enable the consumer to perceive it as an indication of commercial origin, rather than as a mere depiction of a robot/anthropomorphic figure.

Regarding the argument that the sign is a fanciful depiction of an anthropomorphic figure with animal and robotic features, this is not a relevant factor in the criteria for assessing the distinctiveness of a trade mark. The shape of a trade mark must depart significantly from specific basic shapes of the goods concerned that are customary in trade, and should not appear to be simply a variant of such a shape.

In the present case, the figurative mark depicts a robot/anthropomorphic figure that is not markedly different from various basic forms of robots commonly marketed in trade but is simply a variation thereof, in that it has large eyes and two antennae. The following images from an internet search also show that, contrary to the applicant’s arguments, similar depictions of robots (i.e. showing a robot with a head, eyes, two arms, two legs and a torso) are common in the relevant sectors.

https://www.pockets.co.uk/metal-robot-cufflinks-brass.html
https://www.notonthehighstreet.com/lancasterandgibbings/product/robot-key-ring
https://www.hawkin.com/sparkling-mike-robot
https://www.gearbest.com/classic-toys/pp_592858.html
http://www.lamazetoys.co.uk/lamaze-p--g-rusty-the-robot-toy-739-p.asp

It is obvious from the images above that, contrary to the applicant’s arguments, the depiction of a robot/anthropomorphic figure, , applied for does not display specific, recognisable and memorable figurative features that could differentiate it from any other of the numerous depictions of robots/anthropomorphic figures on the market. Therefore, despite the characteristics of the depiction of a robot/anthropomorphic figure in question, the Office is still of the view that this depiction will be perceived as an ordinary robot/anthropomorphic figure by the relevant public, and not as an indication of commercial origin.

The more closely the shape or other elements of the mark for which registration is sought resembles those elements most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR (24/11/2016, T‑578/15, Device of a solar cell, EU:T:2016:674, § 16). Under these circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character (C‑456/01 P & C‑457/01 P, Tabs (3D.), EU:C:2004:258, § 39). A simple departure from the norm or customs of the sector is not sufficient to render inapplicable the ground for refusal given in Article 7(1)(b) EUTMR (12/02/2004, C‑218/01, Perwoll, EU:C:2004:88, § 49).

The applicant refers to the decision of 15/12/2016, R 1468/2016-4, Device of a Cartoon Character, regarding EUTM No 15 240 468, ; however, that decision cannot be applied by analogy to the present case, since, as mentioned by the Board of Appeal in its decision, the sign shows a black and white drawing of a supernatural mutant that seems to be in flames or burning, not amounting to a true-to-life depiction of a human being.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 17 224 213 is hereby rejected for the following goods:

Class 14 Goods in precious metals and their alloys or coated therewith; jewellery; imitation jewellery and ornaments; brooches; charms; cuff links; earrings; jewellery, decorative items and ornaments of imitation gold; necklaces; pins; key rings; trinkets; key chains; pendants; all included in class 14.

Class 21 Glassware, porcelain and earthenware not included in other classes.

Class 28 Toys, and playthings; dolls; plush toys; toy figures; dolls’ clothes; dolls’ houses; puppets.

The application will proceed for the following goods and services:

Class 9 Computer software supplied on the Internet; on-line electronic publications downloadable from the Internet or from a computer network or a computer database; computers, computer hardware and software, computer peripherals; scientific, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling apparatus and instruments; apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images, and/or sound; telephones, pages, mobile phones, facsimile machines; apparatus and instruments for displaying and/or printing out data, information, pictures and/or images; magnetic data carriers, recording discs; video tapes, audio cassettes, compact discs, floppy discs, CD ROMS and DVD ROMS; data processing equipment; computer software for browsing and/or search of data, or enabling browsing and/or searching on a computer network or the Internet; cards, wires, discs and semiconductor devices carrying computer programs; telecommunication apparatus, instruments, networks and circuitry; cables, cable installations, optical fibres, optical communication apparatus and circuitry, all for telecommunication purposes; instruments and software for communicating with computer networks and the world-wide web; computer software for connecting computer network users to design pages and sites on the world wide web; computer hardware and software for database management; computer hardware and software for decompressing digital media; video and audio apparatus, equipment and devices; apparatus for coding and decoding signals; set top box; remote control; satellite dishes; digital satellite broadcasting systems, namely, receivers, transmitters and antennas for satellite broadcasting; analog and digital satellite receivers; apparatus and instruments for data communication, satellite communication and telecommunication; apparatus or devices for satellite antenna televisions; digital satellite receivers; digital satellite systems; satellite communication equipment, set top boxes; a multimedia software application providing access to enable sharing of multimedia content and comments among users; all included in class 9.

Class 14 Precious metals and their alloys; precious stones; jewellery cases; rings; tie clips; clocks; watches; watch straps; stop watches; alarm clocks; key cases; bracelets; all included in class 14.

Class 16 Paper, cardboard; printed matter; photographs; stationery; plastic materials for packaging (not included in other classes); calendars, books, catalogues, postcards, posters, banners, periodicals, printed publications, newspapers, and magazines; greeting cards; wrapping paper and packaging materials; bags and envelopes; bookends, bookmarks; diaries; files; writing pads, memo pads, writing paper; ornaments and decorating made of paper and/or cardboard; pocket notebooks; autograph books; folders for papers; stickers; booklets; red pocket envelopes; inserts for video tapes, digital videodiscs/digital versatile discs (DVD), video discs, laser discs; working pass, neck strap, ID badge/holder; all included in class 16.

Class 18 Leather and imitations of leather, and goods made of these materials not included in other classes; umbrellas; bags; purses and wallets, cases, luggage, pouches; shopping bags; belts; card cases; key cases; handbags; all included in class 18.

Class 21 Household or kitchen utensils and containers (not of precious metal or coated therewith); household containers of precious metal; tableware of precious metal; mugs; bottles; bowls; glasses, vessels; drinking flasks, piggy bank; lunch boxes; pots; all included in class 21.

Class 25 Footwear; aprons; gloves; clothing for children, men and women; sleep wear and pyjamas; hats; caps; socks; slippers; scarves; tee-shirts; shirts; trousers; all included in class 25.

Class 28 Games; play sets; balls and balloons; board games; chess games; chessboards; flying discs (toys); apparatus for electronic games other than those adapted for use with television receivers only; kites; toy masks; mobiles (toys); playing cards; jigsaw puzzles; play articles for swimming, water games, sports and activities; all included in class 28.

Class 30 Chocolate, cookies; crackers; bread, pastry and confectionery, biscuits, cakes, mooncakes, pancakes, Chinese cakes and Western style cakes; all included in class 30.

Class 35 Advertising, promotion, marketing and information services relating thereto; news clipping services; business information services; dissemination of advertising materials; updating of advertising materials; publication of publicity materials; rental and/or sale of advertising space; rental and/or sale of advertising time on communication media; publicity agencies; marketing research; marketing studies; updating of advertising materials and compilation of advertisements for use whether online or otherwise; systemization of data into computer databases; computer data processing; computerized data storage and retrieval services for digital text, data, image, audio, and video works; telephone answering services; personnel management; merchandise ordering services; provision of business information via the Internet; secretarial services; statistical information relating to broadcasting and publishing business information including audience figures, user numbers, costs, circulation numbers and advertising data; organization of exhibition for commercial or advertising purposes; customer relationship management; consultancy; preparation of reports relating to broadcasting and publishing business information, including viewer numbers for television programmes watched via television channels, via the official website, via streaming, simulcast, catch-up, audience awareness of the official website and mobile applications; information, management and advisory services relating to all the aforesaid services; all included in class 35.

Class 38 Broadcasting services, including namely, uploading, capturing, posting, showing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, and/or reproducing of data, multimedia content, video, pictures, images, text, photos, games, user-generated content, audio content, and information via software application on the Internet and other communications networks downloadable on mobile, tablet computer, computer and handheld device; Broadcasting services, including namely, uploading, capturing, posting, showing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, and/or reproducing of movies via software application on the Internet and other communications networks downloadable on mobile, tablet computer, computer and handheld device; sending, collection and transmission services of mail messages, data, electronic media, multimedia content, video, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via Software application on the Internet and other communications networks downloadable on mobile, tablet computer, computer and handheld device; electronic communication networks services; telecommunication networks services; broadcasting, transmission and reception of video and audio information by means of cable, wire, fibre, satellite or digital signals; teletext service; video data transmission services; transmission of video and audio information via fixed telecommunications infrastructure made over a closed secure private network utilizing IP protocols; transmission of the video and audio information via any global computer network comprising inter-connected networks using standard protocols, which includes without limitation to the World Wide Web and all associated telecommunication networks and technologies; Over The Top (OTT) transmission of the video and audio information over the Internet without a multiple system operator being involved in the control or distribution of the content; interactive telecommunication and television broadcast services, video-on-demand subscription services, subscription television broadcasting services; view data services; mobile television services, web casting services; Internet Protocol television services; Internet television services; Over The Top (OTT) television services; providing access to non-downloadable software to enable uploading, downloading, capturing, posting, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing and/or reproducing of data, multimedia content, video, movies, pictures, images, text, photos, games, user-generated content, audio content and information via software application on the Internet and other communications networks; providing access to non-downloadable software to enable the provision of data, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via Internet and other communications networks; providing access to enable content providers to track multimedia content; providing access to computer database on the global computer network and handheld device database on the global communications networks for searching and retrieving information, data and resources available on computer and other communications networks; consultancy, information and advisory services in relation to the foregoing services; providing access to computer database on the global computer network for searching and retrieving information, data, websites and resources available on computer networks; all included in class 38.

Class 41 Services in relation to the production and distribution of television programmes including but not limited to dramas, situation comedies, variety shows, educational, infotainment and culture programmes as well as motion pictures; production and distribution of television programme services, audio visual or audio programming, television programmes, films, interactive television, interactive entertainment and competition; entertainment and infotainment provided via electronic and digital interactive media; digital video and video film production services; distribution and rental of electronic media, recording disc, audio and video compact disc, laser discs, digital video discs/digital versatile discs (DVD) and tapes containing television programmes; entertainment and education services, provision of online computer games and contest; provision of information relating to education, entertainment, news, games, music, movies, drama, television programmes and performers, celebrity personality, training, recreation, sporting, social and cultural activities via the Internet and other communications networks on mobile, tablet computer, computer and handheld device; providing online electronic publications (not downloadable) from the Internet and other communication networks; arranging and organizing musical, educational, sporting and cultural events, exhibitions and competitions; organizing and presentation of live and theatrical performance; arranging and conducting conferences and exhibitions; training for the aforesaid services; educational services, training and instruction services relating to customer services and customer relationship management; practical training and demonstration, arranging and organizing of conferences, seminars and training courses, all related to customer services and customer relationship management; editing, manipulating and publishing and/or reproducing of data, multimedia content, video, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via software application on the Internet and other communications networks downloadable on mobile, tablet computer, computer and handheld device; distributing of, movies via software application on the Internet and other communications networks downloadable on mobile, tablet computer, computer and handheld device; all included in class 41.

Class 42 Computer services; computer programming; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; on-line computer services; application provider services (ASP); creating and maintaining websites; hosting multimedia content for others; all included in class 42.

Class 45 Licensing of television programmes, digital data, still images, moving images, video, audio and text; licensing of digital data, still images, moving images, audio and text; all included in class 45.

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