Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/02/2019

JANNIG & REPKOW Patentanwälte PartG mbB

Klausenberg 20

D-86199 Augsburg

ALEMANIA

Application No:	017935209
Your reference:	3147EP/M
Trade mark:	Asien
Mark type:	Word mark
Applicant:	Shenzhen Weimoli E-Commerce Co., Ltd. 4/F,Bldg A,Xintangkeng Industrial Park,228 Industrial Qu,Qiancheng RD,Henggang ST,Longgang Qu Shenzhen 518000 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 26/09/2018 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 29/10/2018, which may be summarised as follows:

1. The word 'ASIEN' derives from the applicant´s branch company name '艾思恩'. The Chinese pronunciation of the characters '艾思恩' is 'Ai si en', from which evolved the final version of the trademark 'Asien'.

2. The applicant submitted extracts from two webpages to show evidence of sales of the products in the United Kingdom via Amazon.

3. The mark is registered in China and in the United States.

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.

General remarks on Article 7(1)(c) EUTMR

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).

As to the applicant´s arguments:

The applicant claims that the name 'ASIEN' is a transliteration of the applicant´s Chinese branch name. To this regard it must be recalled that, in principle, the use of the sign as a company name or trade name is not in itself, intended to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name is to designate a business which is being run. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being run, such use cannot be considered as being ‘in relation to goods or services’ (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21; 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156, § 31-32).

However, the use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56). In general, this is not the case when the business name is merely used as a shop sign (except when proving use for retail services), or appears on the back of a catalogue or as an incidental indication on a label (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 47).

The use of a business, company or trade name can be regarded as use ‘in relation to goods’ where a party affixes the sign constituting its company name, trade name or shop name to the goods or even though the sign is not affixed, that party uses that sign in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23). Provided that either of these two conditions is met, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 38).

It results from the above case-law, that depending on the circumstances, the use of a sign as a business name does not preclude the use of the same sign as a trade mark as the use of the sign can serve more than one purpose at the same time. However, such a sign is not eligible for registration if the name can also be perceived as a non-distinctive term in relation to the goods and services.

In the present case, firstly, 'ASIEN' is not the applicant´s company name. As indicated by the applicant itself, his company name is ‘'艾思恩', and is pronounced as 'Ai si en', from which evolved the final version of the trademark 'Asien'. Secondly, the genesis of a trademark is irrelevant for examination purposes, as it does not affect the perception of the mark by the relevant consumers. As previously pointed out in the Notice of grounds for refusal, the relevant German, Swedish and Danish-speaking consumer will perceive the sign as having the meaning: Asia.

A sign must be refused as descriptive if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, among other things, the quantity, quality, characteristics, purpose, kind, geographical origin and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific (judgments of 20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (judgment of 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 35). If a mark is descriptive, it is also non-distinctive.

A geographical term is every existing name of a place, for example a country, region, city, lake or river. This list is not exhaustive. Adjectival forms are not sufficiently different from the original geographical term to cause the relevant public to think of something other than that geographical term (judgment of 15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 39).

The first step in assessing a geographical term is to determine whether it is understood as such by the relevant public. Article 7(1)(c) EUTMR does not in principle preclude the registration of geographical names that are unknown to the relevant public — or at least unknown as the designation of a geographical location (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 49; T-379/03, Cloppenburg, EU:T:2005:373, § 36). Whether or not this is the case will be determined by taking as a basis a reasonably well-informed consumer who has sufficient common knowledge but is not a specialist in geography. For an objection to be raised, the Office must prove that the geographical term is known by the relevant public as designating a place (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51).

The second step is to determine whether the geographical term applied for designates a place that is currently associated with the claimed goods or services in the mind of the relevant public or whether it is reasonable to assume that it will be associated with those goods or services in the future (judgment of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 31), or that such a name may, in the mind of the relevant public, designate the geographical origin of that category of goods or services (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51; T-379/03, Cloppenburg, EU:T:2005:373, § 38).

It is not necessary to establish that the name actually designates the true geographical origin of the goods. It is enough to demonstrate that the connection between the name of the place and the goods may enable the relevant public to perceive the contested sign as an indication of the origin of those goods (judgment of 15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 43).

With regard to terms for which it is reasonable to assume that they may designate the geographical origin of the goods and services concerned, the abovementioned factors should be assessed (degree of familiarity of the relevant public with the geographical term, the characteristics of the place designated by the term, and the category of goods or services). In particular, such an assessment must take into account the relevance of the geographical origin of the goods in question, and the customs of the trade in using geographical names to indicate the origin of the goods or to refer to certain qualitative and objective criteria of the goods.

Finally, there are some geographical terms, such as major geographical places or regions as well as countries, which may be refused merely because of their widespread recognition and fame for the high quality of their goods or services. In such cases no detailed assessment of the association between the place and the goods and services is necessary (judgment of 15/12/2011, T-377/09, Passionately Swiss, EU:T:2011:753, § 43-45).

Considering the above mentioned, the Office considers that the sign conveys a straightforward and meaningful message that the services applied for in Class 35 and provided by the applicant come from/originate from the countries in Asia or are rendered in said geographical area. The retail services could also be perceived as encompassing goods made in Asia or related to Asia/Asian culture.

The consumer will immediately perceive the sign applied for and will clearly understand the message as to the geographical origin of the services concerned.

The applicant has submitted extracts from its website to demonstrate that the sign functions as an indicator of origin in the UK market, as follows:

Information extracted from: https://www.amazon.co.uk/Asien-Fingerling-Interactive-Climbing-included/dp/B0781GN186/ref=sr_1_10?ie=UTF8&qid=1540372021&sr=8-10&keywords=Asien

Information extracted from: https://www.amazon.co.uk/Asien-Kazoos-11cm-Assorted-Colours/dp/B07JGTZ3L6/ref=sr_1_5_a_it?ie=UTF8&qid=1540372021&sr=8-5&keywords=Asien

It is need to be highlighted that the assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which protection is sought. In the present case, the relevant public is German, Swedish and Danish consumer. The documents submitted do not show information concerning the use of the mark in the countries where German, Swedish and Danish is an official language.

Moreover, the applicant failed to demonstrate the use of the sign in relation to the services in respect of which registration is sought. The applicant solely provided the link to the websites (on the UK market) which offer specific goods/products and not services of the applicant, however, which either act as a badge of origin.

Finally, as regards an acceptance of the sign in the United States and in China, it suffices to note that, even though this may be taken into consideration, the registration of a trade mark in the U.S.A. and China is subject to different legal provisions, jurisprudence and interpretations from that of European (Union) trade marks (see, as regards registration in the United States of America, 24/01/2008, T-88/06, ‘Safety 1st’, ECLI:EU:T:2008:15). It follows that it is the trade mark law of the U.S./China which determines whether the sign was validly acquired and what scope of protection it has.

Since even registrations made in Member States are not decisive factor it follows, a fortiori, that registrations made in third countries, whose legislation is not subject to European harmonisation, cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(b) and (c) in combination with Article 7(2) EUTMR were met in those countries.

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 17 935 209 is hereby rejected for all the 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.

Michaela POLJOVKOVA