Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/04/2019

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	017982417
Your reference:	TM406496EM-JAF/JXM
Trade mark:	ISOTROPIC
Mark type:	Word mark
Applicant:	IsoTropic Networks, Inc. 2835 Krueger Road Lake Geneva Wisconsin 53147 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/12/2018 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 21/02/2019, which may be summarised as follows:

• The source of information on isotropic antennas is not reliable.

• The mark is inherently distinctive: because an isotropic antenna does not exist, consumers would perceive the trade mark as fanciful.

• The goods covered by the application are sold as entire satellite telecommunication system and antennas are only one of the components and ‘ISOTROPIC’ has no meaning in relation to remaining components.

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.

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).

Firstly, there is no doubt that the word ‘ISOTROPIC’ refers to antennas. The definition of the isotropic antenna given by the Office in the notice of grounds for refusal does not come from the specific website (as claimed by the applicant). The definition worded in exactly identical or very similar way appears on many web pages. However, in any case, it is only given for information purposes as the meaning of the word ‘ISOTROPIC’ is clear to English-speaking consumers and its definition can be found in popular dictionaries.

Contrary to what the applicant claims, the trade mark is devoid of any distinctive character in relation to the goods at hand. Although, as stated by the Office, isotropic antenna does not exist, it is a theoretical ideal antenna that radiates its power uniformly in all directions and is used as reference antenna for calculating the antenna gain. Although consumers of the goods at hand may know that it is impossible to make isotropic antenna in real life, they will not perceive the mark as commercial badge of the goods at hand, but rather as highlighting their positive aspects, namely that they are antennas that posses qualities that are close to those of the isotropic antenna, and other ancillary goods, namely terminals, mounts and remote controllers used with those antennas. It is irrelevant for the purpose of examining the application on absolute grounds for refusal whether the goods are sold as entire system by the applicant, because the examination of the application is performed in relation to the goods for which the protection is sought, in this case satellite telecommunications technology equipment and hardware, namely, antennas, antenna terminals, antenna mounts, antenna remote controllers in Class 9. In the view of the Office, the mark alludes to ideal qualities of the isotropic antenna and has nothing whatsoever that would make the term stand out as a trade mark in the eyes of the relevant consumer.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 982 417 ‘ISOTROPIC’ (word) is hereby rejected for the following goods:

Class 9: Satellite telecommunications technology equipment and hardware, namely, antennas, antenna terminals, antenna mounts, antenna remote controllers.

The application may proceed for the remaining goods and services.

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.

Anna BAKALARZ