Decision on the inherent distinctiveness of an

application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 02/08/2018

CLARKE, MODET Y CÍA. S.L.

Rambla de Méndez Núñez, Nº 21-23, 5º A-B

E-03002 Alicante

ESPAÑA

Application No:	017502717
Your reference:	MUE/17641/CDX/GM/LF
Trade mark:
Mark type:	Figurative mark
Applicant:	SHARP KABUSHIKI KAISHA Also trading as Sharp Corporation 1 Takumi-cho, Sakai-ku, Sakai City Osaka 590-8522 JAPÓN

The Office raised an objection on 06/12/2017 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is partially descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

On 02/02/2018 the applicant requested a two months’ extension of the time limit to submit observations. The request was granted, and, on 11/04/2018, the applicant submitted its observations which may be summarised as follows:

1. It has not been demonstrated that the sign is in fact descriptive in relation to each of the goods.

2. Some goods do not have any visible sharp item and the sign can therefore not be considered descriptive of them.

3. The sign is not immediately descriptive of the kind, quality or any other characteristic of the goods, neither directly or indirectly. The consumer cannot clearly establish that the sign refers only to these products but could refer to a range of products.

4. The sign has a minimum degree of distinctive character and functions as a trade mark.

5. The sign is distinctive and identifies a commercial origin because the applicant is the famous Japanese company SHARP.

6. The sign might appear to be descriptive in relation to blades, knives and simple apparatus that may contain these products. The mere fact of evoking certain characteristics does not mean that the sign lacks distinctive character overall.

7. Trade marks do not necessarily need to be imaginative or creative in a specific way but should merely be able to identify an origin of the goods in question. The applicant’s sign is not the normal way of referring to these goods.

8. The analysis of whether or not a sign is descriptive, or whether any of its possible meanings could be descriptive, must be done in the context of a concrete and current market experience. The applicant’s sign does not consist exclusively of an indication that may serve to designate the kind, or any other feature of the goods for which an objection has been raised.

9. The applicant’s sign is capable of enabling the relevant public to distinguish the goods concerned from those of a different commercial origin.

10. The sign has acquired distinctive character and a subsidiary claim of acquired distinctiveness is presented together with the observations.

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 Office’s replies to the applicant’s arguments:

1. The objection letter stated the reasons why the sign is considered descriptive of the specific goods. The goods in class 7 can all contain sharp blades that are important for their well-functioning. Machine tools, agricultural implements, food processors, blenders, choppers, mincers, grating, slicing and peeling machines, food preparation machines, coffee grinders and milling machines all need blades or a cutting surface for their functioning, or, at least, for one of their possible functionalities. The blades and cutting surfaces will obviously need to be sharp and, the sharper the blade, the better the intended functionality will work.

As to the goods in class 8 (hand tools, cutlery, side arms, razors, shavers and depilation appliances), they also need a blade or cutting edge to function and will work better if this blade or edge is sharp.

The goods in class 9 relate to images or sound; these goods use, produce or reproduce images or sounds. In relation to goods such as these, the term ‘sharp’ means to be clear, distinct and well-defined. The sign ‘SHARP’ is therefore a descriptor of the quality of the image or sound. As to scientific apparatus; they can have many uses and functionalities, some of which could either use a sharp blade or sharp images or sounds.

The surgical, medical, dental and veterinary apparatus and suture materials in class 10 can also all have blades or cutting edges for which the term ‘SHARP’ would be descriptive.

Finally, the household or kitchen utensils in class 21 could also have cutting properties and therefore the term is descriptive also for these.

2. It is not necessary to have a visible sharp item on any of the goods for which an objection has been raised in order for the sign to be understood as descriptive. The goods in class 7, as explained above, have a functionality for which sharp, cutting surfaces are necessary. Also coffee grinders and milling machines need a cutting surface. As an example, see the following text found on the internet on 31/07/2018:

https://www.refreshmentsystems.co.uk/top-5-coffee-grinder-tips-best-differences/

An electric food blender, whether for household or industrial use, needs sharp blades to fulfil its intended use, namely to blend the ingredients of for example a smoothie or a fruit juice. The sign is therefore descriptive also for this good.

In class 8, the electric razors, electric shavers and depilation appliances all have blades and these blades need to be sharp for an optimal functioning of the product. See for example the following internet extract dates 31/07/2018:

https://luxuryshaves.com/how-to-sharpen-electric-razor-blades/

The term ‘SHARP’ is therefore descriptive of these goods.

‘SHARP’ might be a well-known trade mark in respect of goods in class 9, however, this is not relevant to the intrinsic character of the sign. It would have to be examined together with a claim for acquired distinctiveness. The goods in this class might not normally contain blades; however, the applicant’s sign is descriptive of some of the goods in this class in another way than what has been explained above. For a sign to be descriptive, it does not necessarily need to describe a functionality or the shape of the goods but could indicate another quality or a way of production etc. As regards the goods in class 9, since both sound and images can be sharp, the sign ‘SHARP’ is descriptive of any goods that use, produce or reproduce sound or images.

The surgical, medical, dental and veterinary apparatus and instruments and suture material in class 10 have cutting edges and, in consequence, the term ‘SHARP’ is descriptive of them.

Not all household or kitchen utensils need the quality of being sharp. However, the term is wide and includes utensils with a cutting functionality, such as, for example, a grater. Therefore, the sign is descriptive of qualities that are important for goods included under the name “household or kitchen utensils”.

3. As explained above, the sign ‘SHARP’ is directly descriptive of all the goods to which an objection has been raised, in the way that was described in the objection letter and further developed here above. When confronted with the sign for the first time in relation to these goods, consumers would immediately understand the sign as a descriptor, in a specific way for each product. The consumer would have no doubt about the descriptive character or about the goods to which it refers since the meaning of the term is very clear in relation to each specific good.

4. As explained above, the sign is clearly descriptive for the goods to which an objection was raised. As follows from case law, a descriptive sign is also devoid of any distinctive character and must be refused also in accordance with Article 7(1)(b) EUTMR. The sign does not function as a trade mark prima facie and for this reason has to be refused registration.

5. The fact that the applicant is a famous company with the name of ‘SHARP’ could be a decisive factor when assessing acquired distinctiveness of the sign. However, when assessing the inherent capacity of a sign to be registered as an EU trade mark, this aspect cannot be taken into consideration. The inherent capacity of a sign to function as a trade mark is inexistent if the sign is directly descriptive in relation to the goods. In the EUTM Regulation, the need to separate the two situations (inherent and acquired distinctive character) is set clear by the way it is dealt with under Article 7. Furthermore, case law indicates that since the applicant’s sign is immediately descriptive of the goods to which an objection was raised in the sense of Article 7(1)(c), it is also inherently devoid of any distinctive character in the sense of Article 7(1)(b). Now, if, as a consequence of the use made of it, a sign has acquired distinctive character, paragraphs 1(b) and (c) shall not apply. For this situation to occur, the use has to be thoroughly evidenced and proven for all relevant territories and cannot be claimed solely on the basis of the sign being the name of a supposedly well-known company.

6. As explained above, the sign does not merely evoke but clearly and directly describes the feature or functionality of the goods to which an objection was raised. This includes blades, knives and simple apparatus with cutting functionalities. It is therefore descriptive in accordance with Article 7(1)(c) and must be refused registration.

7. The fundamental aspect of a sign to function as a trade mark is whether or not it is capable of identifying a particular commercial origin. This capacity is not based only on criteria such as being imaginative or creative but takes into account the overall aspect of the sign. From what has been explained above, the holder’s sign is descriptive of all the goods to which an objection was raised. When assessing the descriptiveness, it is not relevant whether or not the sign is the common way of referring to the goods in question. It suffices that the term could be used to describe any of their characteristics in order for the term to be descriptive and therefore objectionable in accordance with Article 7(1)(c) EUTMR.

8. As explained under paragraph 7), the sign is descriptive in one of its possible meanings in a clear and direct way. This analysis leading to this conclusion took into account the context of the relevant consumer when seeing the sign for the first time on the respective market and in relation to the goods in question. In this particular scenario, the applicant’s sign consist exclusively of a term that could serve in trade to designate a feature of the goods in question.

9. The sign ‘SHARP’ when seen in relation to the goods in question is not capable of distinguishing these goods from others of a different commercial origin. The sign is immediately descriptive and will therefore only be seen prima facie as a descriptor and not as a distinctive sign. It has to be refused in accordance with Article 7(1)(b) and (c) EUTMR.

10. The Office takes note of the subsidiary claim of acquired distinctiveness, the procedures for which will be initiated once the examination of the inherent registrability of the sign is finalised.

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 17 502 717

is declared to be descriptive and devoid of any distinctive character in the English-speaking territory for the following goods:

Class 7 Machine tools; agricultural implements other than hand-operated; electric food processors for household purposes; electric food blenders for both household and industrial purposes; electric food choppers; meat choppers; meat mincers; grating machines for vegetables; food peeling machines for industrial purposes; food cutting, chopping and slicing machines for industrial purposes; food preparation machines; coffee grinders, other than hand-operated; milling machines.

Class 8 Hand tools and implements (hand-operated); cutlery; side arms; razors; electric razors; electric shavers; electric depilation appliances.

Class 9 Scientific, surveying, photographic, cinematographic, optical, measuring, signalling, checking (supervision) apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; sound bars; home theater equipment; headphones, internet radios, turn tables; LCD television receivers; cameras for monitoring purposes; video surveillance cameras; monitoring apparatus, electric; motion sensors monitoring cameras; audio receivers; apparatus for transmission of sound or images; apparatus for recording of sound or images;; sound reproduction players; loudspeakers; television receivers utilizable display screens as mirrors; monitors utilizable display screens as mirrors; video recordings such as pre-recorded video discs and vide tapes; downloadable music files; downloadable image files; downloadable sound or images.

Class 10 Surgical, medical, dental and veterinary apparatus and instruments; suture materials.

Class 21 Household or kitchen utensils.

The application may proceed for the remaining goods, namely:

Class 7 Motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); incubators for eggs; automatic vending machines; electric vacuum cleaners for household purposes; automatic vacuum cleaners (self-propelled) utilizing cloud-computing systems for household purposes; automatic vacuum cleaners (self-propelled) for household purposes; automatic vacuum cleaners (self-propelled), namely, robots utilizing cloud-computing systems for household maintenance having ion generating function; electric automatic vacuum cleaners (self-propelled), namely, robots for household maintenance; electric vacuum futon (Japanese mattress) cleaners for household purposes; electric washing machines for household purposes; electric washing machines having drying functions for household purposes; dishwashers for household purposes; electric wax-polishing machines for household purposes; food mixing machines for household purposes; electric juicers for household purposes; low speed juicing machines for household use; electric fruit presses for household purposes; electric vacuum cleaners for industrial purposes; automatic vacuum cleaners (self-propelled) utilizing cloud-computing systems for industrial purposes; automatic vacuum cleaners (self-propelled) for industrial purposes; automatic vacuum cleaners (self-propelled), namely, robots utilizing cloud-computing systems for industrial purposes having ion generating function; electric automatic vacuum cleaners (self-propelled), namely, robots for industrial purposes; automatic vacuum cleaners (self-propelled), namely, robots for cleaning solar cell modules; electric washing machines for industrial purposes; dishwashers for industrial purposes; electric juice extractors; electric juicers for industrial purposes; food mixing machines for industrial purposes; beverage processing machines; electric wax-polishing machines for industrial purposes; robots for luggage carriers; elevators; static removal equipment; vending machines.

Class 8 Electric flat irons; electric steam irons; curling tongs; curling irons; hair straighteners; hair stylers.

Class 9 Nautical, weighing, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; robot-shaped smart phones; other smart phones; mobile phones; other telephones; parts and fittings for telephones; tablet computers; tablet style portable digital assistants; wristwatch style portable digital assistants; portable digital assistants; integrated white boards; interactive white boards, integrated white board with touch panels; interactive white boards with touch panels; application software for smart telephones and tablet style digital assistants; other application software; other telecommunication apparatus; electronic-applied apparatus and parts thereof; batteries; electric wire and cables; electric distribution and/or control machinery and apparatus; self-propelled monitoring security robots; self-propelled monitoring robots for security purposes; monitoring robots for security purposes; automatic control machines and instruments by temperature and motion monitoring for air-conditioning or freezing purposes; light dimmers for luminaires; power controllers for luminaires; measuring or testing machines and instruments for temperature, humidity and atmosphere pressure; automatic controllers and remote controllers for measuring, monitoring and controlling purposes for air-conditionings; anti-theft and fire warning apparatus; motion sensors; data recorders for transmission and storage between electronic memory devices via wireless or cable; warning apparatus with monitoring motion of babies by camcorders or sensors; electronic translators by sound; electronic translators; pre-recorded data carriers for voice recognition systems; apparatus for recording computer data; data processing apparatus; computer programs downloadable via the Internet; computer programs (downloadable software); computer and computer software; photovoltaic cell modules; solar batteries; photovoltaic apparatus and installations; security anti-intrusion alarms for doors; gas alarms; smoke alarms; water leak alarms; anti-theft alarms; electronic locking mechanisms for safes; remote monitoring power controls; wattmeters; electric power converters; measuring power apparatus; microbe detectors; microbe sensors; measuring or testing machines and instruments; pedometers; counters; vibration sensors; computer application software for portable digital assistants; computer software for cloud computing; application software; application programs for smartphones utilizing wireless Local Area Network for controlling home electrical appliance; downloadable game programs for mobile phones; computer games programs downloaded via the internet; programs for portable games with liquid crystal displays downloaded via the internet; downloadable computer software; downloadable ring tones for mobile phones; downloadable electronic publications; electronic publications; AGEs (Advanced Glycation End Products) sensors; protein analysis apparatus; electrophoresis apparatus; blotting apparatus; fluorescence imaging apparatus; soil analysis apparatus; bathroom scales.

Class 10 Artificial limbs; eyes and teeth; orthopaedic articles; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; massage apparatus for body; massage apparatus for face.

Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; ion generators for household purposes; electric automatic ion generating apparatus (self-propelled) for household purposes; electric automatic ion generating apparatus (self-propelled) utilizing cloud-computing systems for household purposes; air conditioners for household purposes; air purifiers for household purposes; dehumidifiers for household purposes; humidifiers for household purposes; electric fans; electric ventilation fans; range hoods; electric ranges; blowing machines having ion conditioners for air conditioning purposes; electric blowing machines for air conditioning purposes; futon (Japanese mattress) dryers for household purposes; electric clothes drying machines for household purposes; electric refrigerators for household purposes; super heated steam ovens for household purposes; super heated steam ovens having a function of microwave ovens for household purposes; super heated steam toaster ovens for household purposes; microwave ovens; electric ovens; electromagnetic induction cookers for both household and industrial purposes; electric grills; induction heating cooking heaters; cook top and microwave drawer; electric warming drawers; electric rice cookers for household purposes; electric toasters; electric oven toasters; electric frying pans; electric cooking pans; electric cooking pots; electric jar pot; electric saucepans; electric warming pans; electric steamers; electric coffee makers; electric hot sandwich makers; electric fryers; electric appliances for making soup; electric appliances for making yogurt; bread making machines; electric tea makers; electric urns; electric pressure cookers; ion generators for helmets, helmet cleaners; electrical steam facial apparatus having ion generating functions; electrical facial apparatus having ion generating functions; hair dryers for household purposes; household electrothermic appliances for beauty or sanitary purposes;  light-emitting diode [LED] lighting installations; electric lamps and other lighting apparatus; street lights; street lights having solar cell modules; refrigerating display cabinets; freezing machines and apparatus for industrial purposes; refrigerating and/or freezing showcases; electric kettles; electric water heaters; electric burners for industrial purposes; gas burners for industrial purposes; electric cooking heaters for industrial purposes; dish drying machines for industrial purposes; dish disinfectant apparatus for industrial purposes; drying apparatus; floor heating apparatus; air conditioning and heating apparatus; electric heating apparatus; air conditioners for industrial purposes; ion generators for industrial purposes; water filtering apparatus; water purifiers; electric water dispensers; electric hot water dispensers; bathtub water heater; electric shower apparatus consisting of a water heater and a shower head; electric shower apparatus consisting of a water heater, a shower head and a pump; shower Toilets; electric heating and drying apparatus for bathrooms; electric drying apparatus for bathrooms; gas heating and drying apparatus for bathrooms; gas drying apparatus for bathrooms; electric beverage dispensers for household purposes; electric aerated beverage dispensers for industrial purposes; electric beverage dispensers for industrial purposes; toilet stool units with a washing squirters; toilet bowls; seating for use with Japanese style toilet bowls; hair dryers for industrial purposes; liquid sodium hypochlorite maker; electric water ionizers for household purposes; electric water ionizer.

Class 21 Household or kitchen containers; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware; electric ironing boards.

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.

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.

Elna ISAKSSON