Refusal of application for a European Union trade mark

OPERATIONS DEPARTMENT

L123

Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 28/09/2018

ABB AB

Charlotta Selander

Forskargränd 7

SE-721 78 Västerås

SUECIA

Application No:	17 879 705
Your reference:	TM17515EM01
Trade mark:
Mark type:	Figurative mark
Applicant:	ABB AS P.O. Box 94 N-1375 Billingstad NORUEGA

The Office raised an objection on 16/04/2018 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 14/06/2018, which may be summarised as follows:

Principally, the applied trademark has distinctive character in relation to all the goods and services in question.

Graphic representation of the mark

The mark seen as a whole/overall impression

Subsidiary, the applied trademark has distinctive character in relation to some of the goods and services

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.

Principally, the applied trademark has distinctive character in relation to all the goods and services in question.

Graphic representation of the mark

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Applicant´s remarks

The features of the mark consist of four uniquely composed images in different colours with three triangles in between, all are included in a larger grey oblong square. The first and second images have the shape of a square with a cut corner and the images three and four have the shapes of squares. All of the images within the larger oblong square are different from each other consisting of different elements, shapes and colors.

The mark with all its features is not a basic sign or symbol and does not give information of any kind in relation to the goods and services in question, hence it does not consist of symbolic representations of information. Nor does the trademark provide an overall assessment of a symbol or symbols that serves purely informative or instructional value in relation to the goods and services in question, hence it is not to be seen as a pictogram.

The mark does not consist of a form, model or figure that the relevant public, in this case the professional public, would find lacking of distinctiveness for the goods and services in question.

Office´s comments

The Office respectfully maintains its arguments already stipulated in its notice of grounds for refusal of 16/04/2018 that the features or elements of the mark applied for, taken alone or combined with each other, are not distinctive. The graphic representation, see the following representation of the sign:

will simply be perceived by the relevant public as a kind of display panel with four boxes displaying information in the form of various monitoring symbols and signals, e.g. power switch, voltage, measurement, fluctuation, oscillation, volume, intensity, activity, etc.

In relation to the goods for which registration has been sought:

Class 9 Scientific apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; optical apparatus and instruments; weighing apparatus and instruments; measuring apparatus and instruments; signalling apparatus and instruments; checking (supervision) apparatus and instruments; life-saving apparatus and instruments; teaching apparatus and instruments; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for switching electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity; sound transmitting apparatus; apparatus for the transmission of images; apparatus for reproduction of images; sound reproduction apparatus; apparatus for recording images; sound recording apparatus; data processing equipment; computers; computer software; computer programmes [programs], recorded; computer software, recorded; computer programs [downloadable software]; computer software applications, downloadable; control panels [electricity]; data processing apparatus; interfaces for computers; simulators for the steering and control of vehicles.

the mark will simply be perceived by the relevant public as general indicators for reading off these monitoring symbols and signals, emitted by the goods at issue or emitted by the activation or application of the same goods.

Similarly, the above-cited goods in Class 9 will be perceived by the relevant public as the auxiliary and supportive tools which are essentially necessary in the rendering of the services for which registration is sought:

Class 42 Scientific and technological services; research relating to technology; scientific services and design relating thereto; technological services and design relating thereto; scientific research; industrial analysis services; industrial research; design and development of computer software; computer software design; computer system design.

Therefore, the mark, seen as a whole and perceived in the context of the goods and services applied for, cannot serve as an indicator of commercial origin.

The mark seen as a whole/overall impression

Applicant´s comments

The features of the trademark consists of a unique combination of images that should be considered in its entirety and not independently. The trademark, with its unique features and colors, also make it possible for the professional public to distinguish the products and services concerned, from those of competitors. Given the overall assessment, the applied trademark is therefore distinctive.

Office´s remarks

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

For the reasons cited above, the Office maintains its position that the sign for which protection is sought is devoid of any distinctive character and is not capable of distinguishing the goods and services to which an objection has been raised within the meaning of art. 7(1)(b) EUTMR.

Subsidiary, the applied trademark has distinctive character in relation to some of the goods and services

Applicant´s remarks

With reference to case-law (22/03/2011, T-486/07 - Ford Motor v OHMI, EU:T:2011:104, §41), the level of awareness of relevant public should be considered high when it comes to potentially risky purchase. Since the goods and services in question cover i.e. apparatus and instruments for conducting and regulating electricity, which could be seen as a potentially risky purchase, the awareness of the professional public should be considered high for these goods. Due to this, and for the reasons set forth regarding the relevant public being a professional one with experience and knowledge in relation to the goods, the graphic representation of the mark and the overall assessment of the mark, the trademark should be registered for the following goods:

Class 9 Checking (supervision) apparatus and instruments; life-saving apparatus and instruments; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for switching electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity.

Office´s comments

The Office agrees with the applicant that the goods at issue are mainly specialised goods and mainly aimed at a professional public. However, 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).

Moreover, the case-law cited above by the applicant (22/03/2011, T-486/07 - Ford Motor v OHMI, EU:T:2011:104, §41) concerned the criteria for assessing the likelihood of confusion between two marks in opposition proceedings. Thus, the EU Court in its decision, §47, rejected the applicant´s argument that the criteria for assessing the likelihood of confusion between two trade marks should be altered when the goods in question are valuable, technologically advanced or safety-relevant.

Conclusively, the Office maintains its objection to all the goods applied for in Class 9 and to all the services applied for in Class 42.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 879 705 is hereby rejected for all the goods and services, namely:

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.

Finn PEDERSEN

Avenida de Europa, 4 • E - 03008 • Alicante, Spain

Tel. +34 965139100 • www.euipo.europa.eu

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