Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/02/2019

ScreenTeam s.r.o.

Muchova 2402/7

CZ-695 01 Hodonín

REPÚBLICA CHECA

Application No:	017949804
Your reference:
Trade mark:	SCREENWELL
Mark type:	Word mark
Applicant:	ScreenTeam s.r.o. Muchova 2402/7 CZ-695 01 Hodonín REPÚBLICA CHECA

The Office raised an objection on 25/09/2018 pursuant to Article 7(1)(b) and Article 7(2) 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 13/11/2018, which may be summarised as follows.

1. The mark ‘SCREENWELL’ qualifies to be registered as a European Union.trade mark.

2. The Office has accepted similar trade marks, namely “Herbalife” (EUTM 005332234), “which the conjunction of two words “Herbal” and “life” could also be understood by English speaking consumers as a promotional laudatory slogan: herbal = Life giving, prolonging”, and “Lightwell” (EUTM 013797113). The sign at issue deserves equal treatment.

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. The reasons are as follows:

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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).

The Office’s responses to the applicant’s arguments as follows:

The applicant cannot successfully rely on other and registered trade marks. The circumstances which led to the acceptance of the quoted EU trade mark and the international trade mark registration cannot be subject of the objection in the present proceedings nor does it represent a valid argument in order to overcome the lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The mere fact that, in other cases relating to other marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. 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 (02/05/2012, T435/11, ‘UniversalPHOLED’, EU:T:2012:210).

‘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 marks cited by the applicant are different from the present sign and they are registered for different goods and services. Moreover, both “Herbalife” and “Lightwell” have been previously registered in other countries, including those member states, where English is the official language, and have their own different (dictionary) meaning.

As said before, the relevant consumers would perceive the sign as providing information that the goods in question such as sun louvres of metal for buildings, insulating glass for building, wooden blind, etc. will give shelter/ protection against (sun)light etc. In other words, they ‘screen well’. The sign therefore proclaims a laudatory message, which is of purely promotional nature.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 17 949 804 is hereby rejected 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.

Attachment: Notice of 25/09/2018 of absolute grounds for refusal

Jiri JIRSA