Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/08/2018

ABB AB

Charlotta Selander

Forskargränd 7

SE-721 78 Västerås

SUECIA

Application No:	017879704
Your reference:	TM17514EM01
Trade mark:
Mark type:	Figurative mark
Applicant:	ABB AS P.O. Box 94 N-1375 Billingstad NORUEGA

The Office raised an objection on 25/04/2018 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 21/06/2018, which may be summarised as follows:

1. The mark is distinctive in relation to all the goods and services in question. The goods and services for which registration is sought typically target a professional public with a degree of attention that is at least above average. Therefore, the Office’s conclusion that the relevant public is made up of consumers belonging to the general public of the European Union is incorrect. The sign is not a banal image; it differs from other images commonly used on the market and from the examples from the internet provided by the Office. The sign resembles a fairly true-to-life hand, whereas the examples provided by the Office are just rough images of pixelated hands.

2. The mark is distinctive in relation to some of the goods and services in question, namely those goods and services that are considered potentially risky purchases; therefore, the relevant public’s degree of attention will be high.

3. The Office has previously found signs consisting only of geometric shapes (EUTM No 10 948 222) to be distinctive and therefore the sign in question, consisting of a unique image of a hand, should also be considered distinctive.

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)(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). 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).

A sign ‘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; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

1. As regards the applicant’s argument that the mark is distinctive in relation to all the goods and services for which registration is sought, the Office disagrees. The Office, in its notice of 25/04/2018, did not conclude that the relevant public is made up of consumers belonging to the general public of the European Union. Instead, the Office used the wording ‘relevant consumer in the Union’, which includes both the general public and professional consumers. Defining the relevant public in detail and expressly indicating that it is formed of the public at large and/or professionals is relevant only to the extent that their perceptions of the sign would differ (e.g. if the sign has a meaning only for or a different meaning for professionals). That is to say, the public should be identified as being professionals in a certain field when the sign consists of or contains, for example, a highly technical term or image that would not be known by the public at large. In the present case, the sign would be perceived in the same way by the general public and professional consumers, namely as a banal image of a hand that does not significantly differ from other images commonly used on the market. The Office does not dispute that the examples of pixelated hands provided in its notice of 25/04/2018 are not identical to the sign applied for. The differences between these examples and the sign in question are, however, so small that they cannot endow the sign with distinctive character. Numerous different variations of pixelated hands are used on the market and the sign applied for would merely be perceived as another variant. The sign contains no other elements that could result in it being perceived as memorable, and thus understood as a reference to the commercial origin of the goods and services for which registration is sought.

2. As regards the applicant’s argument that the mark is distinctive in relation to at least some of the goods and services, the Office disagrees. The nature of the goods and services is irrelevant. What matters is the perception of the sign by the relevant public. As explained above, the relevant public (including professionals in the field of electricity), will perceive the sign as a banal image of a pixelated hand.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

3. As regards the applicant’s argument that the Office has previously registered signs consisting only of geometric shapes, 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).

The example mentioned by the applicant (EUTM No 10 948 222) consisted of a totally different image from that in the sign applied for and is therefore not relevant to the present case.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 879 704 is hereby rejected for all the goods and services 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.

Stanislava MIKULOVA