Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/03/2018

GILL JENNINGS & EVERY LLP

The Broadgate Tower

20 Primrose Street

London EC2A 2ES

REINO UNIDO

Application No:	017379322
Your reference:	ALM11381EM
Trade mark:	Rec'n'Share
Mark type:	Word mark
Applicant:	YAMAHA CORPORATION 10-1, Nakazawa-cho, Naka-ku Hamamatsu-shi, Shizuoka JAPÓN

The Office raised an objection on 06/11/2017 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 21/12/2017, which may be summarised as follows:

1. “REC” is not recognised as meaning “record” by English speakers in the EU, in speech or in writing. The “REC” has many meanings; is not a natural or common (e.g. a directly descriptive) juxtaposition, therefore, no obvious or direct indication to the goods. On this basis alone, the mark cannot be considered to be descriptive. The sign contains an ellipsis analogous to that described in BABY-DRY. Merely suggestive or allusive, too vague or indeterminate.

2. The assessment of the descriptive character of a mark must be based on the overall perception of the mark by the public. The message conveyed by “Rec’n’Share” is not immediately obvious, different to common parlance, therefore, the mark clears the minimum required threshold for distinctiveness and is capable of distinguishing the goods in question from those of another trader.

3. A number of marks that have been accepted/registered by the EUIPO that incorporate the element “’n’”.

4. In relation to the objection under both Articles 7(1) (c) and Article 7(1) (b), the assessment must be made in relation to the goods applied for. In relation to “audio amplifiers”, “Rec’n’Share” cannot be understood as “make a recording” or “share”. Audio amplifiers have neither function.

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 arguments, the Office has decided to waive the objection for the following goods:

Class 9 - Audio amplifiers; amplifiers for musical instruments.

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.

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).

1. “REC” is not recognised as meaning “record” by English speakers in the EU, in speech or in writing. The “REC” has many meanings; is not a natural or common (e.g. a directly descriptive) juxtaposition, therefore, no obvious or direct indication to the goods. On this basis alone, the mark cannot be considered to be descriptive. The sign contains an ellipsis analogous to that described in BABY-DRY. Merely suggestive or allusive, too vague or indeterminate.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the present case, the expression “Rec’n’Share” has a clear meaning in the mind of the average English-language consumer in relation to the goods applied for: that they are intended to record and share contents. The fact that it is a created expression, the putting together in one word “Record” “and” “Share” using the acronym or abrevation in “Record” and the ‘n’ meaning “and” as it is sometimes written, do not change in any way the consideration of the expression in the eyes of the average English speaking consumer. It must be pointed out that nowadays ellipsis are commonly used in the marketing and advertising of all kind of goods and services, and the public does not perceive this grammatical variation as unusual. Indeed, the most obvious idea that comes to mind is that the goods serve the purpose or functionality of recording and sharing. Therefore, the sign would be understood as descriptive and devoid of any distinctive character.

The applicant mentions that the expression “Rec” is not recognised as meaning “record”. The Office does not share this opinion, in fact, the abbreviation or acronym “Rec” is widely used internationally, alone or together with a red dot meaning “record” or “recording”. Furthermore, the mentioned dictionary of acronyms is not the only one where ‘REC’ is recognized as the abbreviation of ‘record(ed)’: for instance, also the Collins dictionary mentions it.

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.).

2. The assessment of the descriptive character of a mark must be based on the overall perception of the mark by the public. The message conveyed by “Rec’n’Share” is not immediately obvious, different to common parlance, therefore, the mark clears the minimum required threshold for distinctiveness and is capable of distinguishing the goods in question from those of another trader.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39). However, the objection sent on 06/11/2017 was not based on the fact that the mark was unimaginative or lacking originality but on the basis of its descriptive character and the lack of distinctiveness of the sign applied for.

As mentioned above, the applied mark for the goods in question is clearly descriptive and devoid of any distinctive character.

3. A number of marks that have been accepted/registered by the EUIPO that incorporate the element ’n’.

As regards the applicant’s argument that similar registrations that incorporate the element ’n’ have been accepted by the EUIPO (EUTMR No 1 309 574 ‘PLUG’N’PAY’, No 3 593 944 ‘STORE’N’GO’, No 3 621 034 ‘CRASH’N’BURN’ and No 5 795 711 ‘PLUG’N’SPRAY’), 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).

Furthermore, The Office takes note of the acceptance of the EU trade marks quoted by the applicant. However, it points out that the EUTMR mentioned by the applicant were applied more than eleven years ago (1999, 2003, 2004 and 2007), and the Office notes that its practice has continuously progressed and evolved in order to respond to changes in the environment generally and nowadays the practice of the Office is stricter than before. The Office must consider the trade mark applied for in the correct context, which includes the relevant time. The three trademarks quoted were accepted long time ago and are therefore considered to be not on a par with this case. As stated by case-law, no person can rely, in support of his or her claims, on unlawful acts committed in favour of another. Furthermore, it must be noted that such marks may be challenged within the framework of cancellation proceedings and do not need to stay on the register contrary to public interest.

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 17 379 322 is hereby rejected for the following goods:

Class 9 Apparatus for recording, transmission or reproduction of sound and images; microphones; loudspeakers; headphones; mini audio systems; portable music players; hard disc recorders; audio interfaces; audio mixers; audio signal processors; audio-video receivers; audio equalizer apparatus; electric and electronic effects units for musical instruments; remote controls for audio and video apparatus; electronic tone generators; MIDI interfaces; computer software; computer software for generating, reproducing, effecting, and recording sound; computer software for arranging and sequencing music; computer software for uploading and downloading music; computer software for authoring and producing digital content; computer communications software for transmitting digital content; computer software for controlling audio apparatus; downloadable computer programs and software provided from a computer network..

The application may proceed for the remaining goods.

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.

Jesús ROMERO FERNÁNDEZ