Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 17/10/2018

BAYLOS

C/ José Lázaro Galdiano, 6

E-28036 Madrid

ESPAÑA

Application No:	017930213
Your reference:	17.0541AD.EU
Trade mark:	BRILLIANCE
Mark type:	Word mark
Applicant:	NIGHT OPTICS USA, Inc. 605 Oro Dam Blvd. E. Oroville California 95965 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 08/08/2018 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.

The applicant submitted its observations on 05/10/2018, which may be summarised as follows.

1. There is no direct and immediate link between the sign ‘BRILLIANCE” and the goods applied for, the term is too vague to be descriptive and does not provide specific information on the goods. The applicant is of the opinion that a link can only be established after a cognitive process or interpretative effort.

2. The term has several meanings. The meaning given by the Office is not linked to the goods themselves but to images which are to be captured with these goods.

3. The specialised consumer will not perceive the term ‘BRILLIANCE’ as descriptive of a characteristic of the goods, because the term is uncommon in the relevant sector.

4. The sign is short and therefore easy to remember.

5. The lack of distinctiveness is not supported by the descriptiveness.

6. The term is not a mere promotional slogan and it takes several steps to understand the positive message.

7. The applicant considers the judgement of the General Court T-749/14 AROMA comparable to the case at hand.

8. The Office has accepted in the past several EUTMs containing the word BRILLIANCE

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).

Under Article 7(1)(b) EUTMR, ‘trademarks 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).

The possible descriptiveness of the term ‘BRILLIANCE’ must be seen in relation to the submitted goods which are: ‘Image intensifiers for use in night vision optical instruments, namely riflescopes, spotting scopes, sights for firearms, tactical monoculars’ in class 9.

In the present case, since the BRILLIANCE sign is composed of English terms, it is the point of view of an English-speaking consumer that has to be taken into account when assessing the distinctive character of the trade mark applied for (see, for example, the judgments of the Court of First Instance of 8 June 2005 in Case T-315/03 Hans-Peter Wilfer v OHIM, ‘Rockbass’, paragraph 54, [2005] ECR II-1981; and of 27 September 2005 in Case T-123/04 Cargo Partner AG v OHIM, ‘Cargo Partner’, paragraph 50, [2005] ECR II-3979). As a result, in order to appreciate the effect of an expression like BRILLIANCE, account therefore has to be taken of the point of view of an average English-speaking consumer of these goods (see, in this respect, the decision of the Second Board of Appeal of 10 March 2006 in Case R 1267/2005-2, ‘Cherry Lips’, paragraph 20).

The Office respectfully disagrees with applicant’s first argument that there is no direct and immediate link between the sign ‘BRILLIANCE” and the goods applied for, and that the term is too vague to be descriptive and that it does not provide specific information on the goods.

As set out in the Office’s notification of 08/08/2018, the average English speaking consumer (including the specialised consumer) will interpret the mark in relation to the objected goods with the following meaning: “Brightness of light or colour” (Cambridge English Dictionary, on 08/08/2018 at,

https://dictionary.cambridge.org/dictionary/english/brilliance ).

The applied for good are ‘image intensifiers for use in night vision optical instruments’. In relation to optical apparatus, the expression ‘brilliance’ may serve to indicate the brightness adjustment of any optical instrument, such as cameras or mobile phones and thus also for the applicant’s image intensifiers.

By adjusting the brilliance features of the apparatus, logically the image to be captured with that apparatus will vary in brightness of light and/or colour which will facilitate the improvement of night images. The link with the goods is direct and unambiguous. The applicant cannot expect to be granted exclusive use of the term ‘BRILLIANCE’ and cannot monopolise a commonplace expression such as ‘BRILLIANCE’, which serves as an indication of brightness/brilliance settings.

The applicant claims that the specialised consumer will not perceive the term ‘BRILLIANCE’ as descriptive of a characteristic of the goods, because the term is uncommon in the relevant sector.

The goods of the contested mark, namely, ‘Image intensifiers for use in night vision optical instruments, namely riflescopes, spotting scopes, sights for firearms, tactical monoculars’ in class 9 are of interest to the professional in need of optical instruments for night vision who are considered to have a higher level of awareness in their field and to the general public who seek to use these instruments for the exercise of their leisure activities who’s awareness will also be higher than average because the goods are not every day commodities.

The fact that the relevant public is attentive or has a higher awareness does not, however, necessarily mean that the ‘descriptiveness threshold’ of the sign must be ‘higher’ to a certain extent in order for that sign to fall under the ground for refusal set out in Article 7(1)(c) EUTMR (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Likewise, 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). Indeed, in this case, the relevant public will readily understand the mark applied for ‘BRILLIANCE’ as being descriptive and lacking in distinctiveness.

As to the argument that the term ‘BRILLIANCE’ has several meanings, the Office replies 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, emphasis added.)

The area of disagreement in the present case relates not to the various possible meanings of the word BRILLIANCE making up the sign applied for, but to whether the term BRILLIANCE would be understood by the relevant consumers as an indication of trade origin or as a description of characteristics of the goods concerned.

Under point one the Office has already explained the direct link that exists between the goods image intensifiers’ and the sign. The Office is aware of other meanings of the term BRILLIANCE, like excellence’ or ‘splendour’ which reinforce the positive message of the mark.

The fact that the sign because of its shortness is easy to remember is considered not relevant. ‘BRILLIANCE’ is a completely commonplace word in relation to optical goods. The meaning of the expression is clear and obvious. The relevant consumer when confronted with the mark for the goods at issue will only see the mark as an indication about a characteristic and the intended purpose of the goods in question. The image intensifiers of the applicant serve to adjust and improve the quality of the images to be captured or viewed. The sign is therefore understood by the relevant specialist consumer with a clear meaning which is directly connected with the goods concerned here, notwithstanding the applicants comment that the word ‘brilliance’ is unusual in the sector.

Accordingly, the Office maintains that the mark applied for does not enable the relevant consumer to identify the goods in question and distinguish them from those of another commercial origin. Therefore, it is devoid of distinctive character for the goods specified.

Contrary to the applicant’s opinion that it would take several steps for the consumer to reach the link between the positive promotional message of the sign and the goods, in the opinion of the Office, a potential consumer – in other words, a purchaser of image intensifiers will understand the sign BRILLIANCE directly and immediately, and without the need to form any intellectual conclusions, as a reference to a characteristic of the goods, specifically, that they will adjust and improve the brightness of the images to be captured.

As to the comparison with case T-749/14 AROMA in point 7, the Office does not follow this argument. In the case at hand the link between the sign BRILLIANCE and the goods image intensifiers is direct. However in the AROMA case, the link between the goods, cooking apparatus and the term AROMA would need another mental step to establish that link between the expression and the goods.

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).

The trade marks referred to by the applicant containing the word ‘BRILLIANCE’ were not applied to protect visual imaging related goods and are therefore considered not comparable.

Furthermore most of the referred to registrations containing the word BRILLIANCE have been issued more than seven years ago and since then the trade mark practices of the Office have evolved with time. Under these circumstances it cannot be expected that the conditions under which these marks were assessed at the time can be extrapolated to the consideration of the grounds of registration of the present application for the purposes of casting doubt on the conclusion that the trade mark applied for descriptive of the goods and is devoid of distinctive character in accordance with Article 7(1)(b) and (c) EUTMR.

In the context of the goods applied for, it is necessary to stress that BRILLIANCE for the goods at issue is crucial. Once the image intensifiers are labelled with the sign applied for, it immediately informs consumers, without further reflection, that it contains features allowing the user to regulate and improve the brilliance of the images to be captured or viewed. Therefore, the sign applied for describes a positive characteristic of the applied for image intensifiers.

As a consequence of all the foregoing, the expression applied be free to be used by any undertaking which has an interest in making similar claims about the characteristics of their goods.

The unambiguous message is evident, without any particular mental exertion on the part of the public. There is no need for any further mental step in order to understand the meaning of the mark applied for. There is no possibility to detect any singularity or resonance or a minimum of distinctive character in this sign.

BRILLIANCE, therefore, cannot distinguish the products of one undertaking from those of other undertakings. Apart from its descriptive content, the sign does not convey any element which might function as an indication of source. It is thereby devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

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 017 93 02 13 is hereby rejected for all the 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.

Carine CEELEN