Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 24/10/2018

GROOM WILKES & WRIGHT LLP

The Haybarn

Upton End Farm Business Park

Meppershall Road

Shillington, Hitchin, Hertfordshire SG5 3PF

REINO UNIDO

Application No:	017928901
Your reference:	TM23854EU00/TAW
Trade mark:	SMARTFOLD
Mark type:	Word mark
Applicant:	Dorel Home Furnishings, Inc. 410 East 1st Street South Wright City Missouri 63390 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/08/2018 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 25/09/2018, which may be summarised as follows:

1. The Office did not conduct a full, detailed and stringent examination of the application.

2. The mark is merely suggestive or allusive. The mark has a vague and indeterminate character and is fanciful.

3. The mark applied for does not convey obvious and direct information regarding the kind of the goods in question. The mark requires an interpretative effort to reach the meaning suggested by the examiner.

4. The mark has at least the minimum level of distinctive character.

5. The EUIPO has accepted several marks with the term SMART: No 17 484 148 SMART STEEL, No 17 370 263 SMART POUR, No 17 516 493 SMART MOVE, No 17 869 520 smart GUARD.

6. The EUIPO has accepted several marks with the term FOLD: No 9 525 172 fold away, No 4 298 551 W-Z FOLD, No 11 303 203 4FOLD.

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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 applicant attests that when assessing the distinctive character of the mark applied for, the examiner refers to the goods in total without providing reason for the objections for each of the goods, contrary to the principles established by the Court of Justice. However, the applicant is reminded that where the same ground for refusal is given for a group of goods the Office may use general reasoning for all the goods concerned if appropriate to do so. The Office maintains that in the present case use of the general reasoning, namely that the contested goods are foldable and fashionable metal furniture, applies to all the goods concerned on the basis that all the contested goods are foldable and fashionable metal furniture. Consequently, the Office maintains that the generalised reasoning provided by the examiner is indeed appropriate to all the contested goods.

In the present case, the trade mark applied for consists of the expression ‘SMARTFOLD’, which means ‘something which is fashionable, and can be made smaller by bending or closing parts of it’. The first word, ‘SMART’, ‘fashionable; chic’ (information extracted from Collins English Dictionary on 03/08/2018 at https://www.collinsdictionary.com/dictionary/english/smart ).

The second word, ‘FOLD’, has the following definition: ‘to bend or be bent double so that one part covers another’ (information extracted from Collins English Dictionary on 03/08/2018 at https://www.collinsdictionary.com/dictionary/english/fold_1 ).

The structure of the expression ‘SMARTFOLD’ does not diverge from the rules of English grammar but complies with them. Therefore, the relevant consumer will perceive the mark not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions having purely informational value should not be reserved for a single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark in question has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, namely metal folding furniture, namely, serving carts and utility tables, are furniture that are made of metal, look very chic, and can be folded. The mark describes the characteristics of the goods quite unambiguously, by giving consumers relevant information as regards their nature.

The goods for which registration is sought target mainly the average consumers. It is clear that the relevant consumers will perceive the combination of words ‘SMARTFOLD’, in relation to the contested goods, as a meaningful expression referring to foldable metal serving carts or utility tables that look fashionable.

The mark applied for, ‘SMARTFOLD’, thus clearly conveys obvious and direct information about the kind of the contested goods. The words that make up the mark applied for will be understood by the relevant English-speaking public, because the mark ‘SMARTFOLD’ is not imaginative, metaphorical or unusual; it is no more than the sum of its parts and consists exclusively of the simple and clear combination of two immediately identifiable words. The combination of words does not contain any additional element capable of giving the mark distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin distinguishing the applicant’s goods from those of its competitors.

Article 7(1)(b) EUTMR – 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).

It is settled case-law that ‘a sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘SMARTFOLD’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin but instead understand that the goods are fashionable furniture, that can be made smaller by bending or closing parts of it.

The mark is composed of the verbal elements ‘SMARTFOLD’, written in standard upper case characters. The goods to which an objection has been raised and for which registration is sought, namely metal folding furniture, namely, serving carts and utility tables, are specialised goods that target mainly the average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods sold under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those goods from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the goods at issue but, rather, as a descriptive expression with a clear meaning.

There is nothing in the mark that might, beyond its obvious, direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication with a descriptive meaning and, when applied to a variety of goods, will immediately give the relevant consumer an indication of the characteristics of those goods (i.e. their nature and quality).

As regards the applicant’s argument that a number of similar registrations have been accepted 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).

Furthermore, the registered trade marks contain different word elements and they were applied for different goods or services.

It is true that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) EUTMR. It is also true that the mark applied for is a word mark – composed of two verbal elements in a normal typeface – with no distinctive character. The trade mark does not have any additional distinctive elements, such as a figurative element or a distinctive verbal element, that would allow the mark to distinguish the goods for which registration is sought from those of competitors.

The Office agrees with the applicant that trade marks that are merely allusive or suggestive or require further interpretation shall not be refused registration. However, the sign ‘SMARTFOLD’ cannot be perceived as anything other than an indication of the characteristics of the goods in question. The message expressed by the sign applied for is clear and direct and will be immediately perceived by the relevant public. It is not vague in any way, does not lend itself to different interpretations and is not imprecise or akin to an ‘evocative’ sign. The expression is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive and non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17 928 901 is hereby rejected for the following goods:

Class 20 Metal folding furniture, namely, serving carts and utility tables.

The application may proceed for the remaining goods.

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.

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