Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/08/2018

CSY Herts

Helios Court 1 Bishop Square

Hatfield Hertfordshire AL10 9NE

REINO UNIDO

Application No:	017761305
Your reference:	EMT8113
Trade mark:	SMARTREADY
Mark type:	Word mark
Applicant:	Giovanni Maria Laporta 467 Whippendell Road Watford, Hertfordshire WD18 7PS REINO UNIDO

The Office raised an objection on 21/02/2018 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it describes certain characteristics of the goods for which protection is sought, and it is also devoid of any distinctive character, for the reasons set out in the attached letter.

After a two–month extension, the applicant submitted its observations on 20/06/2018, which may be summarised as follows.

1. Goods that are suitable to perform in association with a smart system are typically described as 'Smart' or 'Smart Compatible". However, the mark applied for contains the word SMART together with the word READY. The combination provides a distinctive overall mark that does not inform consumers that the goods/services covered are smart compatible goods/services. The mark SMARTREADY is an imaginative trade mark that has been coined by the Applicant to identify their unique product range of traditional style windows and door/window fittings that have been pre-configured at the manufacturing stage to be easily upgradeable to include smart technology. The class 9 goods applied for are computer hardware and computer software accessories for the Applicant's class 6 goods that are mechanically adapted to receive smart technology, but which do not include any smart technology as such at the time of sale. The class 9 goods are registrable for the same reasons as in relation to the class 6 goods.

2. SMARTREADY is not a mark that is used by third parties in relation to these goods and there is no reason to think that consumers would perceive it as descriptive in the context of the Applicant's goods.

3. The word mark SMART READY has recently been registered by the Applicant in relation to goods in class 6 in the UK without objection. It should also be noted that the mark 'Smart Ready' has been successfully registered by the Applicant at the EUIPO under registration no. 017844788 in relation to the class 37 services of installation of doors and windows' without receiving any objections under Article 7 EUTMR. Finally, it should be taken into account that the mark 'SmartReady' was registered before the EUIPO under registration no.001472612 in relation to 'Computer hardware, computer software, smart card reading apparatus' in class 9 which are identical to the goods in class 09 applied for. Under the principle of proportionality and the principle of the protection of legitimate expectations, the mark SMARTREADY should be allowed for the same goods in class 9.

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 will now assess, in order, the arguments from the applicant.

1. Goods that are suitable to perform in association with a smart system are typically described as 'Smart' or 'Smart Compatible". However, the mark applied for contains the word SMART together with the word READY. The combination provides a distinctive overall mark that does not inform consumers that the goods/services covered are smart compatible goods/services. The mark SMARTREADY is an imaginative trade mark that has been coined by the Applicant to identify their unique product range of traditional style windows and door/window fittings that have been pre-configured at the manufacturing stage to be easily upgradeable to include smart technology. The class 9 goods applied for are computer hardware and computer software accessories for the Applicant's class 6 goods that are mechanically adapted to receive smart technology, but which do not include any smart technology as such at the time of sale. The class 9 goods are registrable for the same reasons as in relation to the class 6 goods.

The fact that the goods suitable for perform with a smart system are usually called “SMART COMPATIBLE”, or that some of the sources provided by the Office on the objection letter do not use specifically the expression “SMART READY” does not change the descriptiveness of the latter expression. Case law clearly states that 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).

The applicant does not contest the meaning of the words that are part of the sign in consideration or the meaning of their combination. In fact, it is stated on the reply letter (emphasis provided by the examiner):

ln relation to the class 6 goods it was argued in the letter of 21 February 2018 that consumers would perceive the mark SMARTREADY as providing information that the doors, windows and locks covered by the application are suitable to receive or perform in association with a smart system. The Applicant's goods are in fact doors, windows and locks and the like that are mechanically adapted to receive smart technology, but which do not include any smart technology when originally sold. Since the door fittings are

mechanically adapted to receive smart technology, the customer can upgrade the door fittings to incorporate smart technology, such as remote locking controls or sensors to detect if the door is locked etc, if they so wish at a later stage after purchase.

Additionally, the description of the goods provided by the applicant at a latter paragraph – namely that the concerned goods “(…) have been pre-configured at the manufacturing stage to be easily upgradeable to include smart technology” – clearly agrees with the reasoning provided by the Office in the objection letter.

As for the applicant’s argument in regards to the goods listed under class 09, the Office respectfully submits that reasoning provided also falls short of demonstrating that the expression “SMARTREADY” would not be descriptive in relation to computer hardware and computer software accessories for the applicant's class 6 goods that are mechanically adapted to receive smart technology.

Therefore, the argument in consideration is dismissed.

2. SMARTREADY is not a mark that is used by third parties in relation to these goods and there is no reason to think that consumers would perceive it as descriptive in the context of the Applicant's goods.

In regards to that argument, the Office would like to state that the lack of use of a mark by other parties is not an acceptable indication of its distinctiveness. The distinctive character of a trade mark is determined based solely on then perception of the relevant public of its capability of acting as a badge of origin of the goods in question. From case law:

‘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 service 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)

Therefore, the concerning argument is dismissed.

3. The word mark SMART READY has recently been registered by the Applicant in relation to goods in class 6 in the UK without objection. It should also be noted that the mark 'Smart Ready' has been successfully registered by the Applicant at the EUIPO under registration no. 017844788 in relation to the class 37 services of installation of doors and windows' without receiving any objections under Article 7 EUTMR. Finally, it should be taken into account that the mark 'SmartReady' was registered before the EUIPO under registration no.001472612 in relation to 'Computer hardware, computer software, smart card reading apparatus' in class 9 which are identical to the goods in class 09 applied for. Under the principle of proportionality and the principle of the protection of legitimate expectations, the mark SMARTREADY should be allowed for the same goods in class 9.

According to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

In that sense, the Office finds that the possible acceptance for registration of the trade mark in question by the UKIPO has no impact on the decision at hand. It does not disqualify the objection raised or indicates any fault in its reasoning.

Also, as the applicant must already know, it is not sufficient that the Office has registered other trade marks which include the expression “SMART READY”. It is well established that the legality of a decision of the Board is to be measured solely against the Regulation, as interpreted by the EU courts, and not by the practice of the Office’s examiners in other decisions (see judgments of 10 March 2011, C-51/10 P, ‘1000’, paras 73 to 75 and of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, para. 57 and case-law cited therein).

Moreover, insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para. 76 and case-law cited therein).

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, C-51/10 P, 1000, para. 77 and case-law cited therein).

Therefore, the Office cannot find merit in this argument.

In conclusion, the Office states that, despite the arguments provided by the applicant, it has been found that the sign ‘SMARTREADY’ is merely a descriptive expression, one that conveys, in a direct and straightforward manner, its meaning to the relevant consumer: that the goods in question are suited for smart technology and smart system installation. Consequently, it is incapable of performing the essential function of a trade mark, which is to distinguish the goods of one undertaking from those of its competitors.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 761 305 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.

Christiano DOS SANTOS TIMBO