Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/10/2018

MÜLLER FOTTNER STEINECKE Rechtsanwalts- und Patentanwaltspartnerschaft mbB

Prielmayerstr. 3

D-80335 München

ALEMANIA

Application No:	017932319
Your reference:	SO07FF29/UM
Trade mark:	ACOUSTIC SURFACE AUDIO
Mark type:	Word mark
Applicant:	Sony Corporation 1-7-1 Konan, Minato-ku Tokyo 108-0075 JAPÓN

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 L110 attached letter.

The application consists of the word mark “ACOUSTIC SURFACE AUDIO”.

The goods to which this refusal applies are:

Class 9 Loudspeakers; television receivers [TV sets].

The applicant submitted its observations on 18/09/2018, which may be summarised as follows:

1. The sign “ACOUSTIC SURFACE AUDIO” has a vague and inconsistent meaning as it is grammatically incorrect. Mental steps must be made to understand its meaning, especially as regards to the word “SURFACE” so it has neither a descriptive meaning relating to the goods claimed nor to the characteristics of these goods.

2. The sign is unusual in trade and exclusively used by the applicant as shown by a google search as the term is not used in normal usage to designate the characteristics of the concerned goods. It is recognized by the public as original and an indication of origin from a specific undertaking.

3. The mark does not convey an immediately understandable and conclusive meaning and the examiner incorrectly added the word “equipment” to “AUDIO”.

4. The trade mark presents an original structure which endows it with distinctive character. Moreover, both adjectives start with an “A” which creates the original sequence “A-S-A” both visually and phonetically.

5. The term “SURFACE” in relation with the goods does not provide any clear information, it has an abstract and immaterial character and is not used in normal usage to designate any product, part of a product or electronic devices (see “GC, judgement of April 03, 2017 in case (T-215/16))”. It cannot respond to, absorb or control sound, is not a synonym of screen and is not used to designate any characteristics of loudspeakers.

6. The Office accepted several trade marks with the word “SURFACE” for goods in class 9 in the past.

7. “ACOUSTIC” and “AUDIO” are associated to sound and sound propagation.

8. The combination of “ACOUSTIC” and “SURFACE” is unusual as “ACOUSTIC” refers to a volume necessary for sound to expand whereas “SURFACE” refers to a flat layer and it has no relation with the goods as “SURFACE” is not used in electronics.

9. The inclusion of “AUDIO” at the end of the trade mark is in contradiction with the syntactic rules of the English language and, thus, difficult to understand.

10. The public will not perceive the trade mark in its entirety as delivering a clear message.

11. To be descriptive, the message conveyed by a mark must appear in a clear and unambiguous manner so as to be in concrete and direct relation with the goods and services, this trade mark is only suggestive in relation with the claimed goods.

12. The objection should be withdrawn as the trade mark cannot be rejected pursuant to Article 7(1)(b) and (c).

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.

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 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, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘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 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

1. The applicant states that the sign “ACOUSTIC SURFACE AUDIO” has a vague and inconsistent meaning as it is grammatically incorrect, that mental steps must be made to understand its meaning, especially as regards to the word “SURFACE” so it has neither a descriptive meaning relating to the goods claimed nor to the characteristics of these goods. However, the expression that composes the mark is not grammatically incorrect, as shown in LearnEnglish at https://learnenglish.britishcouncil.org/en/english-grammar/noun-modifiers on 11/10/2018 “We often use two nouns together to show that one thing is a part of something else: the village church, the car door, the kitchen window, the chair leg, my coat pocket, London residents. In these examples, the first noun is called a noun modifier”. The word “SURFACE” is used as a noun modifier. It qualifies the word “AUDIO”. As indicated in the L110 attached letter, the relevant consumer would understand that this sign has the following descriptive meaning: the audio equipment of the exterior face of an object that responds to, absorbs, or controls sound. The relevant consumer immediately understands that the audio-visual goods applied for incorporate an audio equipment.

2. The applicant indicates that the sign is unusual in trade and exclusively used by the applicant as shown by a google search, as the term is not used in normal usage to designate the characteristics of the concerned goods, that it is recognized by the public as original and an indication of origin from a specific undertaking. As regards the applicant’s argument that no other competitors make use of the same combination, ‘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). The components of the sign “ACOUSTIC SURFACE AUDIO” are descriptive in nature in relation with the goods claimed and thus will only be perceived as an informative message about the characteristics of the goods claimed and not as a sign able to fulfil its function as a trade mark that is to distinguish the goods claimed from the goods sold by other competitors.

3. The applicant underlines the fact that the mark does not convey an immediately understandable and conclusive meaning and that the examiner incorrectly added the word “equipment” to “AUDIO”. However, the sign applied for immediately informs that the goods claimed incorporates a technology relating to sound, a surface that responds to, absorbs, controls or emits sounds. The relevant consumer will immediately make the mental connection that exists between the goods applied for and this technology. Moreover, in the Online English Collins dictionary at https://www.collinsdictionary.com/dictionary/english on 11/10/2018 , the definition for “AUDIO” is the following: “Audio equipment is used for recording and reproducing sound”.

4. The applicant explains that the trade mark presents an original structure which endows it with distinctive character and that both adjectives start with an “A” which creates the original sequence “A-S-A” both visually and phonetically. But, as a whole the sign applied for is only an informative message about the characteristics of the goods applied for and as such is not distinctive. Signs which are devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR are those which are incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, enabling the consumer who acquired the goods or services covered by the mark 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 (27/02/2002, T-34/00, ‘Eurocool’, § 37 and 05/05/2009, T-449/07, ‘EU-Bruzzel’, § 18). In view of the sign applied for, the relevant consumer would not be able to remember the sign relating to the goods applied for and would therefore be unable to repeat a future purchase. The use of the sequence “A-S-A” both visually and phonetically is not sufficient to render the sign distinctive.

5. The applicant argues that the term “SURFACE” in relation with the goods does not provide any clear information, it has an abstract and immaterial character and is not used in normal usage to designate any product, part of a product or electronic devices (see “GC, judgement of April 03, 2017 in case (T-215/16))”, that it cannot respond to, absorb or control sound, is not a synonym of screen and is not used to designate any characteristics of loudspeakers. Nevertheless, one of its meanings, as indicated by Online Collins English Dictionary, is “the exterior face of an object or one such face”. So, the term “SURFACE” indicates that such a face is one of the features of the goods applied for. It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 102). As can be seen in the Internet search carried out on 11/10/2018, the term “SURFACE” can be used as a synonym of screen on the market and in relation with loudspeakers:

https://avstumpfl.com/en/projection-screens/mobile-projection-screens/monoblox/surface/

https://www.projectorreviews.com/articles-guides/choosing-the-right-screen-surface-material-for-your-home-theater-projector-system-2/

https://www.feonic.com/vibration-speaker-technology

http://prodisplay.com/products/soundpod-surface-sound-speakers/

6. As regards the applicant’s argument that a number of similar registrations with the word “SURFACE” for goods in class 9 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). Moreover, each application must be considered on its own merits taking account of its own particular circumstances and having particular regard to the trade mark and the goods or services the subject of the application. The marks cited by the applicant, as a whole do not bear the exact same verbal elements or were not applied exactly for the same products.

7. The applicant indicates that “ACOUSTIC” and “AUDIO” are associated to sound and sound propagation. The Office agrees with this indication.

8. The applicant claims that the combination of “ACOUSTIC” and “SURFACE” is unusual as “ACOUSTIC” refers to a volume necessary for sound to expand whereas “SURFACE” refers to a flat layer and it has no relation with the goods as “SURFACE” is not used in electronics. Yet, one of the meanings of the adjective “ACOUSTIC” as stated in the Online Collins English Dictionary is “of or related to sound, the sense of hearing, or acoustics”. This adjective immediately informs the relevant consumer that sound is one of the features born by the goods sold. So, taken as a whole, the sign immediately informs the consumer that the goods applied for incorporate a face in connection with sound technology. Trade marks which meaning is mainly perceived by the target consumer as an informative message more than the indication of the commercial origin of the services are devoid of distinctive character (03/07/2003, T-122/01, Best Buy, § 30).

9. The applicant alleges that the inclusion of “AUDIO” at the end of the trade mark is in contradiction with the syntactic rules of the English language and, thus, difficult to understand. However, the word “AUDIO” is used as a noun in the expression “ACOUSTIC SURFACE AUDIO” so the sign applied for does not depart from syntactic rules of the English language, it is made of an adjective, a noun modifier and a noun. This expression will immediately be understood by the English speaking relevant public.

10. The applicant asserts that the public will not perceive the trade mark in its entirety as delivering a clear message. Yet, 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). So, as the words composing the mark are descriptive in nature, as a whole, the sign applied for is also descriptive of the characteristics of the sign applied for. The relevant consumer will immediately know that the products applied for incorporate a technology relating to sound. It is thus an informative message which is not able to distinguish the products applied for from products of other undertakings.

11. The applicant states that to be descriptive, the message conveyed by a mark must appear in a clear and unambiguous manner so as to be in concrete and direct relation with the goods and services, this trade mark is only suggestive in relation with the claimed goods. However, due to its informative nature about the characteristics of the goods sold, the relevant consumer would not need to make any special effort to understand the relation that exists between the goods and the mark applied for. It is therefore not a suggestive sign but a sign that lacks distinctiveness relating to the goods claimed.

12. The applicant concludes that the objection should be withdrawn as the trade mark cannot be rejected pursuant to Article 7(1)(b) and (c). However, as the elements composing the mark are purely descriptive in nature, they are also devoid of any distinctive character, so the sign is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of its competitors. The sign applied for cannot, therefore, be registered.

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 017932319 is hereby rejected in its entirety, 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.

Brigitte BERNHEIM

Annex: L110 letter dated 08/08/2018