Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/04/2018

OPEN DATA SECURITY, S.L.

GARETH TIMOTHY SHARP

Calle Santiago nº56 Local

E-38001 Santa Cruz de Tenerife

ESPAÑA

Application No:	017638801
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	OPEN DATA SECURITY, S.L. CALLE SANTIAGO Nº56 LOCAL E-38001 SANTA CRUZ DE TENERIFE ESPAÑA

1. The Office raised an objection on 30/01/2018, 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.

2. The applicant submitted its observations on 30/03/2018, which may be summarised as follows:

• The mark possesses at least the minimum level of distinctive character in relation to the goods and services at issue.

• The mark is not intended to represent a USB cable. When uploading the image of the logo, it was erroneously uploaded in the horizontal position which gives the impression of the representation of a USB cable. In reality the logo represents the figure of a minimalist robot, and the average consumer will see it as such when the mark is in an upright position. The robot will also make some movements to call the users’ attention, like lifting its arm.

• The logo is going to be used in relation to virtual helper and not a USB cable. A virtual helper is a very common tool used in programs and websites. The logo will be used as an icon on the website, and when clicked it will offer help regarding, and answer any questions about the services offered on the website.

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 maintain the objection.

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).

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).

Initially the Office notes that the reference to Article 7(2) EUTMR in the Notice of grounds for refusal is waived as it was an obvious error. The mark is a pure figurative mark, and the objection therefore relates to the whole Community.

As indicated in the Notice of grounds for refusal the mark is considered to be not only devoid of any distinctive character, but also descriptive as it depicts a USB/flash drive device, and thus provides information about the kind, a feature and the intended purpose of the goods and services at issue.

The goods and services applied for are a number of goods that are for use by both average consumers (information technology and audio-visual, multimedia and photographic devices), and goods and services directed at professional consumers in, among others, the information technology, electricity and science fields.

The mark at hand is clearly a pictogram of a USB cable. Whether in a horizontal or upright position, the relevant consumers will immediately identify the mark as such. This is the shape of a USB type A connector. See https://www.lifewire.com/usb-type-a-connector-2626032 where it states that:

USB Type A connectors, officially called Standard-A connectors, are flat and rectangular in shape. Type A is the "original" USB connector and is the most recognizable and commonly used connector.

As can be seen in the enclosed print-out, the connector has two holes, like in the applied for mark. These holes are usually small and rectangular, while they are round in the mark. This, however, will not be perceived by the relevant consumers: they will take in the whole mark at once and will not study in detail all the elements that make up the mark. They will therefore at a quick glance immediately assume that the mark depicts an USB cable. If they perceive the round holes at all, they would just assume that these are a variation of the usual rectangular holes and would not give them any trade mark significance.

As stated in the Notice of grounds for refusal, the relevant consumers would at most see the two horizontal lines on the left-hand side of the mark as two cables, or that the mark as a whole is a flash drive with the two horizontal lines being a string or chain attached to the flash drive.

A simple USB cable/flash drive device, such as the mark applied for, would not be seen as a trade originator in relation to any goods and services that could be used with or relate to USB/flash drive devices.

The circle around the USB cable does not render the mark distinctive. A circle is a simple and basic geometrical shape which does not render the mark as a whole distinctive. It will at most be seen as a typical circular label.

Therefore, there is no element in the mark that would lead the relevant consumers to believe that the mark is an indication of trade origin.

Even if it is the applicant’s intention that the mark should depict a minimalist robot, this is not what the relevant consumers would see even when the mark is seen in an upright position. The mark has all the features of a USB cable/flash drive, and it would take a very creative mind indeed to interpret the mark as the picture a robot.

As regards the applicant’s explanation how it uses the mark on its web site, this is not relevant. The relevant thing is how the relevant consumers will perceive the mark in connection with the goods and service appleid for, and as explained above, they would not see it as an indication of trade origin in relation to those goods and services.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR, the application for European Union trade mark No 17 638 801 is hereby rejected for the following goods and services::

Class 9: Apparatus, instruments and cables for electricity; Diving equipment; Information technology and audio-visual, multimedia and photographic devices; Magnets; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Safety, security, protection and signalling devices; Scientific and laboratory devices for treatment using electricity; Scientific research and laboratory apparatus, educational apparatus and simulators; Information technology and audiovisual equipment.

Class 42: Design services; IT services; Science and technology services; Testing, authentication and quality control.

The application will proceed accordingly for the remaining goods, namely for:

Class 9: Magnetizers and demagnetizers.

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.

Anne-Lee KRISTENSEN