Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 30/04/2018

MARIETTI, GISLON E TRUPIANO S.R.L.

Via Larga, 16

I-20122 Milano

ITALIA

Application No:	017645607
Your reference:	AN171405W41
Trade mark:	beyond SMART
Mark type:	Figurative mark
Applicant:	EMOMO TECHNOLOGY CO. LTD 4TH FLOOR, YONGHE BUILDING, TAIWAN INDUSTRIAL PARK, SHIYAN SHENZHEN 518108 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 04/01/2018 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 which is an integral part of this decision.

The applicant submitted its observations on 07/02/2018 which may be summarised as follows.

1. The figurative element, due to its size and position, is likely to create a lasting recollection and impression of the mark.

2. ‘Beyond’ on its own is eligible for registration. ‘SMART’ is also eligible for registration. Examples of previous registration of these words are submitted.

3. The element is clearly distinctive on its own so the addition of ‘SMART’ in capital letters cannot deprive the sign of its distinctive character. The wave is a strong visual impact and conveys a message linked to the term ‘beyond’, ‘giving the idea of something going beyond, like a flowing wave’. (Examples of EUTM registrations than contain similar wave like figurative devices are presented.) The combination of the elements leads to a trade mark with distinctive character.

4. Both ‘’beyond’ and ‘SMART’ have many meanings which leads to the trade mark as a whole with many different meanings. The mark constitutes a play with words and introduces elements of intrigue or surprise, triggers a cognitive process and requires an effort of interpretation.

5. The combination in question is not commonly used in trade in the world of technology, architecture or furniture and is particularly fanciful in relation to furniture.

6. The mark is merely allusive, a mental effort is required. A list of similar allusive registered marks is submitted. The same trade mark was, in addition, registered for services in Class 35.

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.

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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 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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Arguments of the applicant

1. The figurative element, due to its size and position, is likely to create a lasting recollection and impression of the mark.

The Office maintains that the figurative element, a simple swoosh attached to the letter ‘b’ will not be given trade mark significance. It will be seen, despite its size and position, as an unremarkable decorative feature that reinforces the meaning of the verbal element to which it is attached. As the applicant itself states, ‘it conveys a message linked to the term ‘beyond’ giving the idea of something going beyond, like a wave’. Therefore, it reinforces the meaning of the word ‘beyond’. The list of trade marks that contain a wave like element that the applicant submits in Enclosure 5 are not comparable to the present case, mainly because, although some may contain a wave like element, they also either contain a distinctive verbal and/or figurative element which renders the marks distinctive.

2. ‘Beyond’ on its own is eligible for registration. ‘SMART’ is also eligible for registration. Examples of previous registration of these words are submitted.

The fact that the different verbal elements that compose the mark were registered as marks in the past does not lead to the conclusion that the mark as a whole is distinctive.

In any case, the Office notes that the word ‘beyond’ on its own may not portray such a clear message but serves to accentuate the meaning of a descriptive adjective when used in combination. Therefore, while it may be considered vague on its own (beyond what?), together with a clearly descriptive word, it serves to put emphasis on that word and accentuate its meaning.

‘Smart’ is an adjective traditionally used to refer to, inter alia, intelligence or elegance (as confirmed by some of the definitions provided by the applicant). However, in recent times, with the development of smart technology and the popularity of smart devices, the term has come to have another meaning that was perhaps not the case at the time of the registration of some trade marks in the past. Notwithstanding this more recent ‘high tech’ meaning, the traditional meaning does not cease to exist and may be relevant, depending on the goods and services in question.

3. The element is clearly distinctive on its own so the addition of ‘SMART’ in capital letters cannot deprive the sign of its distinctive character. The combination of the elements leads to a trade mark with distinctive character.

The Office does not question the distinctive character of on its own as this is not the trade mark in question. ‘Beyond’ means ‘more than’. ‘SMART’ does, in fact, change the meaning significantly when added to ‘beyond’. ‘Beyond smart’ means ‘more than smart’. ‘Smart’ is descriptive for the goods in question and ‘Beyond SMART’ simply intensifies the descriptive meaning.

4. Both ‘’beyond’ and ‘SMART’ have many meanings which leads to the trade mark as a whole with many different meanings. The mark constitutes a play with words and introduces elements of intrigue or surprise, triggers a cognitive process and requires an effort of interpretation.

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.)

It is clear from the above that at least one of the meanings of the mark is ‘more than smart’ and this will be immediately understood as a descriptive laudatory reference to the goods in question by the average English-speaking consumer, the relevant consumer in this case.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin.

(15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84).

The goods in Class 9 are electronic goods that may use cutting edge technology even more advanced or better than smart technology as we know it. The good in Class 20 are furniture that may not only look smart but may also have smart features such as adaptability.

Therefore, the Office maintains that the mark in question will not be given trade mark significance by the consumer who will see it immediately and without further reflection as a laudatory descriptive reference to the goods in question.

5. The combination in question is not commonly used in trade in the world of technology, architecture or furniture and is particularly fanciful in relation to furniture.

As regards the applicant’s argument that the combination is not commonly used, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Given the descriptive meaning of the sign, the Office maintains that it will not be given trademark significance by the relevant consumer in relation to the goods in question. With regard to furniture, the Office notes that ‘Smart furniture’ is a term that is currently in use in the market place. The following links show the use of this term in relation to goods in Class 20 (screen shots in Annex 1).

Smart furniture:

www.forbes.com/sites/houzz/2016/12/23/8-smart-furniture-solutions-for-small-homes/#4d89e3464fb3

https://www.the-ambient.com/features/smart-furniture-edit-early-2018-228

Smart couch:

www.lonny.com/Scout+Out/articles/dLSV708ClHC/Smart+Couch+Will+Change+Everything

Smart bed:

www.restperformance.com/

With regard to goods in Class 9 the notion of smart devices is well established in the market place.

https://en.wikipedia.org/wiki/Smart_device

‘Smart’ therefore, is a descriptive adjective in relation to the goods in question and is simply a laudatory reference to the goods in question that are even more ‘smart’.

6. The mark is merely allusive, a mental effort is required. A list of similar allusive registered marks is submitted. The same trade mark was, in addition, registered for services in Class 35.

Given the above arguments relating to the laudatory descriptive nature of the sign, the Office concludes that the mark cannot be seen as merely allusive. No mental effort is required on the part of the English-speaking average consumer who will immediately get the descriptive meaning of the words and for which the figurative element will be seen as unremarkable, at most, reinforcing the meaning of ‘beyond’ as highlighted by the applicant. It certainly would not distract the consumers’ attention from the clearly descriptive meaning of the words and the sign, as a whole, would not be given any trade mark significance by the relevant consumer who would understand it simply as a laudatory reference to the goods.

As regards the applicant’s argument that the same mark has been registered for services 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).

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 17 645 607 is hereby rejected for all the goods claimed.

Class 9 Apparatus for recording, transmission or reproduction of sound or images namely a sound system comprising amplifiers, audio speakers, receivers, electronic docking stations for use with mp3 players, mp4 players, mobile phones and smart phones, audio control systems, and components therefor; apparatus for switching, transforming, accumulating, regulating or controlling electricity; digital electronic controllers; communications controllers; electrical controllers; electronic controllers; sensor controllers; process control digital controllers.

Class 20 Furniture; tables; sofas; beds; seats; chairs; couches.

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.

Lynn BURTCHAELL

ANNEX 1

https://www.forbes.com/sites/houzz/2016/12/23/8-smart-furniture-solutions-for-small-homes/#4d89e3464fb3

https://www.the-ambient.com/features/smart-furniture-edit-early-2018-228

http://www.lonny.com/Scout+Out/articles/dLSV708ClHC/Smart+Couch+Will+Change+Everything

https://www.restperformance.com/