Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 09/01/2018

shen zhen mei jia shi shang shi pin you xian gong si

NO.12A UNIT 1 BLDG. 9, PERIOD 2 ZHENYELUAN MOUNTAIN VALLEY GARDEN, LONGGANG ST., LONGGANG DISTRICT

SHENZHEN, GUANGDONG PROVINCE

REPÚBLICA POPULAR DE CHINA

Application No:	017307703
Your reference:	17080588
Trade mark:	Mega Creative Jewelry
Mark type:	Word mark
Applicant:	shen zhen mei jia shi shang shi pin you xian gong si NO.12A UNIT 1 BLDG. 9, PERIOD 2 ZHENYELUAN MOUNTAIN VALLEY GARDEN, LONGGANG ST., LONGGANG DISTRICT SHENZHEN, GUANGDONG PROVINCE REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 13/10/2017 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 10/12/2017, which may be summarised as follows.

1. The word ‘MEGA’ has already been registered in other classes.

2. The mark ‘MEGA CREATIVE JEWELRY’ has already been registered.

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.

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.

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).

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).

The word ‘MEGA’ has already been registered in other classes.

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).

‘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).

The Office notes that the applicant has listed a number of requisitions, which include the word ‘Mega’. The fact that marks have been accepted, containing the word ‘mega’ is irrelevant in the case at hand. The mark at hand lacks distinctiveness and is descriptive taking into account the goods of the application. The Office deems the word combination ‘Mega Creative Jewelry’, as descriptive and it also lacks the distinctiveness required to be accepted as a European Union Trade Mark.

The mark ‘MEGA CREATIVE JEWELRY’ has already been registered.

The applicant holds that the word ‘MEGA CREATIVE JEWELRY’ has already been registered, registration No 16 585 093. In this regard the Office notes that the marks cannot be equated. The mark being cited by the applicant is a figurative mark, and the mark at hand is a word mark. The mark cited is also quite stylized with a figurative element almost overshadowing the verbal elements - . Therefore one cannot derive analogous interpretations, because the two marks are very different from each other.

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 17 307 703 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.

Alistair BUGEJA