Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/10/2019

FORRESTERS

Skygarden Erika-Mann-Str. 11

D-80636 Munich

ALEMANIA

Application No:	017950321
Your reference:	TM20180907001
Trade mark:	MAGIC
Mark type:	Word mark
Applicant:	HUAWEI TECHNOLOGIES CO.,LTD. Huawei Administration Building, Bantian, Longgang District, Shenzhen, Guangdong, P.R. China Shenzhen/Guangdong 518129 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 08/10/2018 pursuant to Article 7(1)(b) and (c) 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 15/01/2019, which may be summarised as follows:

• The applicant points out that the definition given by the examiner is not used as a definition of the mark, it is merely a statement that some use the word “MAGIC” in this context

• It is not usual to use “MAGIC” in a laudatory sense, in the same way as other adjectives, such as “great”, “wonderful”, “brilliant”, “fantastic” etc.

• The term “MAGIC” is not purely descriptive

• Words such as sterling, magic, cool, diamond are all words which have their own independent meaning, defined by oxforddictionary.com as “the power of apparently influencing events by using mysterious or supernatural forces”

• The applicant submits that the word “MAGIC” is distinctive in its own right and does not refer to the characteristics of the goods

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 waive the objection for all the goods applied for in Class 9 pursuant to Article 7(1)(c) EUTMR.

The objection is nevertheless maintained for all the goods applied for in Class 9 pursuant to Article 7(1)(b) and Article 7(2) EUTMR.

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).

As regards the applicant’s first line of argument that the definition given by the examiner is a merely statement that some use the word “MAGIC” in this context, the Office is convinced that the relevant English-speaking consumer would understand the sign applied for “MAGIC” as a meaningful term rather than a badge of commercial origin in relation to the goods for which protection is sought.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

As regards the applicant’s second line of argument, that it is not usual to use “MAGIC” in a laudatory sense, the Office respectfully does not share this argument. The Office considers that all the applied for goods could be promoted as “very effective in producing the desired results” and therefore maintains its objection. The sign will simply be perceived by the relevant public as a promotional laudatory expression, the function of which is to communicate an inspirational or motivational statement, as already noted in our previous notification of 08/10/2019. Moreover, in the case at hand, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that they are wonderful and that they will not disappoint the relevant consumer for example.

As to the third argument that the term “MAGIC” is not purely descriptive, the Office has waived the objection for all the goods applied for pursuant to Article 7(1)(c) EUTMR. Therefore the Office considers that this argument is not of application in the case at hand and will not be taken into account.

As regards the applicant’s further line of argument that the term “MAGIC” has its own independent meaning defined by oxforddictionary.com as “the power of apparently events by using mysterious or supernatural forces”, it must be noted that this definition corresponds to the term “MAGIC” as a noun. In its objection of 08/10/2018, the definition extracted from the online Oxford dictionary was “very effective in producing the desired results / wonderful” which does correspond to the term “MAGIC” as an adjective and not as a noun. As already noted in this decision, the fact that the sign at hand can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected does not suffice to make it distinctive, unless those various elements make the sign distinctive enough in order to be immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods as to enable the relevant consumer to distinguish without any possibility of confusion, the applicant’s goods from those of another commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

Finally, as regards the applicant’s argument that the word “MAGIC” is distinctive in its own right and does not refer to the characteristics of the goods, it must be noted that the objection pursuant to Article 7(1)(c) has been waived. Therefore, the Office considers that all the arguments regarding the descriptiveness of the sign will not be taken into account as they are not relevant for the case at hand. Furthermore, it must be noted that the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 017950321 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.

Soledad PALACIO MONTILLA