Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 29/01/2018

ZACCO SWEDEN AB

P.O. Box 5581

SE-114 85 Stockholm

SUECIA

Application No:	017256009
Your reference:	T41704691EM00
Trade mark:	LOUDER
Mark type:	Word mark
Applicant:	Zhejiang Geely Holding Group Co. Ltd. No. 1760 JiangLing Road, Bin-Jiang District Hangzhou City (Zhejiang Province) 310051 REPÚBLICA POPULAR DE CHINA

1. The Office raised an objection on 05/10/2017, pursuant to Article 7(1)(b) and (c) EUTMR 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.

2. The applicant submitted its observations on 27/10/2017, which may be summarised as follows:

• There is no direct and specific link between the mark ‘LOUDER’ and the goods objected to.

• The goods “electric vehicles, gear boxes for land vehicles; driving motors for land vehicles” do not necessarily include an exhausted system, and the goods “anti-theft devices for vehicles” do not necessarily include an alarm at all.

• Vehicles like cars and motorcycles are very expensive and seldom purchased goods and the consumers’ attention is high when they buy the goods. Furthermore, vehicles are not bought because they are noisy, not least because there are governmental regulations on the level of noise a vehicle may produce.

• As for exhaust systems and anti-theft devices they are already installed when a vehicle is purchased. Therefore, the consumers would not make any connection between the mark LOUDER and the goods at issue.

• The goods in question are not a homogenous group of goods and therefore the examiner should have carried out a separate assessment in respect of each of the goods at issue.

• The applicant is willing to delete the goods “anti-theft devices for vehicles” if this would make the mark registrable.

• The applicant refers to case law in support of its arguments.

3. 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 waive the objection for the following goods:

Class 12: Gear boxes for land vehicle.

The objection is maintained for the remaining goods.

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.

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).

Firstly, the limitation offered is conditional, and can therefore not be taken into account.

The relevant consumers are both average consumers and professionals in the automotive field.

The terms “vehicles” and “vehicles for locomotion by land” include all kinds of cars, trucks, motorcycles etc. including hybrid and electric cars and motorcycles.

Hybrids and electric cars and motorcycles pose a danger to pedestrians as they are so quiet that pedestrian cannot hear them approach. Legislation is actually in the pipeline to make electric and hybrid cars louder. Manufacturers are also making the noise of hybrid racing cars louder. See for instance the following web sites:

http://www.autoexpress.co.uk/car-news/consumer-news/86494/eu-lower-conventional-car-noise-make-electric-cars-louder

EU to lower conventional car noise but make electric cars louder

New EU ruling will lower noise levels of new ICE vehicles and make all electric cars use Acoustic Vehicle Alerting System

http://www.dailymail.co.uk/news/article-2595451/Silent-deadly-EU-rules-electric-cars-make-artificial-engine-noise-fears-kill-unsuspecting-pedestrians.html

Silent but deadly: EU rules all electric cars must make artificial engine noise

… The MEPs voted to introduce mandatory ‘acoustic vehicle alerting systems’ (AVAS) – sounding like a conventional engine - to all new electric and hybrid cars to protect vulnerable road users.

https://gizmodo.com/5899368/how-audi-makes-its-electric-cars-sound-like-a-futuristic-gas-guzzler/

Electric cars run nearly silent, which is great for minimizing noise pollution, but bad for pedestrians who can't hear a vehicle approaching. So Audi is developing an electronic engine roar so the company's e-Tron vehicles can still be heard.

http://www.thedrive.com/start-finish/15637/its-official-formula-1-engines-will-become-louder-simpler-and-cheaper-in-2021

It’s Official: Formula 1 Engines Will Become Louder, Simpler, and Cheaper in 2021

The 1.6-liter V-6 hybrid power units will soon rev to 18,000 rpm.

“Vehicles for locomotion by water” includes silent electric boats. These could, like electric cars, be made to sound louder for safety reasons.

“Vehicles for locomotion by air” includes electric airplanes which are now developed, and which are silent. These could also be made louder or safety reasons.

“Vehicles for locomotion by rail” includes electric trams and trolleybuses which may be so silent that they are a danger for pedestrians. These could also be made louder or safety reasons.

The goods “driving motors for land vehicles” can be hybrid and electric motors which are louder than the usual electric and hybrid motors. Also, some consumers want powerful motors with louder noise in their cars. They may therefore customize their cars by installing more powerful and louder motors, or they may choose to buy cars equipped with louder and more powerful motors than the norm.

As for “anti-theft devices for vehicles”, they include alarms which are louder than normal alarms.

The mark is therefore descriptive of nature of the goods. One could also argue that the mark is also a promotional message, because the fact that the applicant’s goods are louder may be seen as a positive thing. However, this is only mentioned as it is enough to refuse the goods based on the mark’s descriptiveness.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17 256 009 is hereby rejected for the following goods:

Class 12: Vehicles; cars; motorcycles; sports cars; electric vehicles; driving motors for land vehicles; anti-theft devices for vehicles; vehicles for locomotion by land, air, water, or rail; all the aforesaid being motorised vehicles, and none of the aforesaid being scale-model vehicles, or ride-on vehicles for children.

The application may proceed for the remaining goods and services, namely for:

Class 12: Coachwork for vehicles; car bodies; car screens; gear boxes for land vehicles; tires for vehicle wheels.

Class 37: Maintenance and repair of motor vehicles; service, repair, maintenance and fueling of vehicles; cleaning (Vehicle and vessel's -); corrosion protection of vehicles and vessels; installation and repair of anti-theft alarm; retreading of tires; vulcanization [repair] tires; repair of tires; air conditioning apparatus installation and repair; vehicle battery charging; vehicle washing; vehicle service stations [refuelling and maintenance]; construction of vehicle body structures and the vehicles' exterior design.

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.

Anne-Lee KRISTENSEN