Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 01/04/2019

Despacho González-Bueno, S.L.P.

Calle Velázquez 19, 2º Dcha.

E-28001 Madrid

Spain

Application No:	17961223
Your reference:	CE-09808
Trade mark:
Mark type:	Figurative mark
Applicant:	Hanwang Technology Co., LTD. 3rd Floor, Building 5, 8 Dongbeiwang West Road, Haidian District Beijing People’s Republic of China

The Office raised an objection on 26/11/2018 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 which forms an integral part of this decision.

The applicant submitted its observations on 22/01/2019, which may be summarised as follows.

1. ‘AI’ may also be perceived as the combination of uppercase ‘A’ and lowercase ‘l’ and in this case it does not refer to artificial intelligence. Even if consumers were to perceive ‘AI’ as in the objection letter, this acronym has a wide range of possible meanings and so does the word Nose.

2. Even if the sign is perceived with the meaning as defined by the Office, it does not relate to most of the goods which are linked neither to artificial intelligence nor smell.

3. The same mark was registered by the UK Office, therefore, it cannot be objectionable on EU level either.

4. There are a number of registered marks that contain the word ‘Nose’ or ‘AI’ for goods in Class 9.

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 for the reasons set forth below.

1.

The applicant essentially claims that both AI and Nose can have various meanings such as, for example the internet domain name of Antigua (AI) and a police spy (Nose). It must be recalled 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). These provisions clearly run counter to the applicant’s arguments. In fact, in the objection letter the Office has shown the actual meanings upon which it has based its objection, and it has been demonstrated that both ‘AI’ and ‘Nose’ can have a descriptive meaning in relation to the goods at issue. This principle is also applicable to the claim that ‘AI’ can be perceived as the combination of uppercase and lowercase letters; again, there is also a possibility that this letter combination may be perceived as defined by the Office which is sufficient for the rejection and which possibility has not been denied in a convincing manner by the applicant, either. Based on the foregoing, the applicant’s argument in this regard must be rejected.

2.

In its objection letter, in addition to dictionary definitions, the Office also provided articles that show the possible use of artificial intelligence in the detection and study of olfactory processes. The applicant intends to counter this first by claiming that ‘glasses’ or ‘power station automation devices” have no link with the sign and then by making a general observation, namely that a “vast majority of the applied-for goods have no relation … with artificial intelligence or with the sense of smell.” In this regard, it must be recalled that it is sufficient for a mark to be refused if it lacks distinctiveness in one of its possible meanings in relation to the goods at issue. (29/04/2010, T-586/08, BioPietra, EU:T:2010:171, § 35; 23/01/2014, T-68/13, Care to care, EU:T:2014:29, § 41; 02/12/2015, T-528/14, Growth Delivered, EU:T:2015:920, § 46). In the present case, the applicant’s goods cover software, instruments, testing devices and other goods of general definition which either de facto use artificial intelligence such as ‘humanoid robot with artificial intelligence’ or may use it and/or have the purpose of assisting in olfactory analysis such as ‘odor analysis instruments’. There exists, thus, a possibility that both the specific and the more widely defined goods can be used in the context of artificial intelligence and/or olfactory analysis, that is, they can (at least potentially) contain an identifiable subcategory or specific goods for which the mark applied for is descriptive. In the absence of a suitable restriction by the applicant, the descriptiveness objection necessarily affects the broad category as such. Taking for example glasses specifically named by the applicant, there are glasses with built-in artificial intelligence features such as those used in gaming or in certain other fields.

3.

With regard to the applicant’s argument that the mark has been registered in the UK, it must be recalled, first, that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated. (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 47). Thus, the fact that the mark applied for, has been registered in the UK does not automatically render the mark registerable under the EUTM system. Second, the objection was based on the English-speaking public, therefore, the relevant public also includes English-speaking consumers outside the UK such as those in Ireland and Malta. Moreover, according to established case-law, English is also widely understood in the Scandinavian countries, the Netherlands, Finland as well as in Cyprus (09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26 and 27). Therefore, the mere existence of registration of the same sign in one jurisdiction is not sufficient to waive the objection for the reasons set forth above.

4.

Finally, the applicant cites various trademark registrations containing the words ‘AI’ or ‘Nose’. In this regard, it must be pointed out that, 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). Furthermore, “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).

On the basis of all the foregoing, it must be concluded that the applicant’s arguments are not sufficient to overcome the objections raised by the Office, consequently, the application for European Union trade mark No 17 961 223 is hereby rejected for all the goods claimed, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR,

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.

Ferenc GAZDA