Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 25/09/2019

HGF LIMITED

1 City Walk

Leeds, Leeds LS11 9DX

REINO UNIDO

Application No:	018006517
Your reference:	TWA/T267868EP
Trade mark:
Mark type:	Three-dimensional
Applicant:	Logitech Europe S.A. EPFL - Quartier de I'Innovation Daniel Borel Innovation Center CH-1015 Lausanne SUIZA

The Office raised an objection on 05/02/2019 pursuant to Article 7(1)(b) 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 10/06/2019, which may be summarised as follows:

1. The overall appearance of the mark is distinctive and the Ball Shape of the product differs significantly from the norm. The applicant supports this claim with the print-outs from on-line stores, by press coverage clips and the sworn statements of people active in the audio technology industry.

2. The applied for mark incorporates a figurate element comprised of a central oval with a defined border, with smaller semi-circular and oval forms at the top and bottom and on both sides. These elements together form an abstract design. This design is sufficiently creative and imaginative to confer upon it at least a minimum degree of distinctive character such that it is capable of identifying the goods of the Applicant from those of other undertakings.

3. The applicant claims that there must be consistency in the decision making so that all Applicants are treated equally. If a genuinely comparable precedent is cited the Office must consider whether it should be followed (Case R676/2013-2, Decision of the Second Board of Appeal of 29 January 2014, Paragraph 24). It follows that, in the present case, considerable significance can be contributed to the registration of EUTM No. 004348348.

In addition to the abovementioned arguments, in the reply to the Office’s objection letter, you included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. You also indicated that this claim was meant as a subsidiary claim.

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

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

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).

With regards to the applicant’s arguments:

As the Office pointed out in its objection of 05/02/2019 “the distinctive character of a trade mark is assessed in relation to the goods for which protection is sought, and the perception of the relevant public.

It must be taken into account that the perception of the relevant public is not necessarily the same for a shape mark consisting of the appearance of the product itself or its packaging as it is for a word mark, a figurative mark or a shape mark that does not have that appearance. Although the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself or its packaging.

The appearance of the mark for which protection is sought does not depart significantly from the norms and customs of the relevant sector. End users will usually direct their attention more to the label or name of the product than to its shape or packaging.

In particular, the sign for which protection is sought consists merely of a combination of presentational features of spherical microphone head with visible parts of light for signalling the on/off status, grids, connector socket and part for attaching/fastening it to the holder that would be seen by the relevant consumer as typical of the shapes of the goods in question. This shape is not markedly different from various basic shapes commonly used in trade for the goods at issue; it is merely a variation thereof.

Therefore, the sign for which protection is sought is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.”

As regards the applicant’s argument that the overall appearance of the mark is distinctive and the Ball Shape of the product differs significantly from the norm as supported by the evidence, it has to be said that the Office will examine this evidence further with the subsidiary claim examination. However, at this moment for the sake of inherent distinctivness examination it has to be mentioned that the majority of evidence presents the product of very similar shape, but with a very prominent element of Blue with some slight additional stylized elements with the oval bordering around them.

As the applicant rightly pointed out to the EUIPO guidelines: “The Examiner should determine whether the representation of the three-dimensional trade mark contains other elements, such as words or labels that might give the trade mark distinctive character. As a general principle, any element that on its own is distinctive will lend the 3D trade mark distinctive character as long as it is perceivable in the normal use of the product and is sufficient to render the mark registrable.”

Even though the applicant relies on this principle by claiming that “the applied for mark incorporates a figurate element comprised of a central oval with a defined border, with smaller semi-circular and oval forms at the top and bottom and on both sides. These elements together form an abstract design. This design is sufficiently creative and imaginative to confer upon it at least a minimum degree of distinctive character such that it is capable of identifying the goods of the Applicant from those of other undertakings.” The Office by applying the very same principle has found out that firstly the “label” in the sense of the EUIPO guidelines points out to rather something more concrete, prominent, recognisable, unforgettable, associable, etc., than particular shapes of grids. The Office has not in any way examined the sign with the “Blue” element on it, as such sign was not applied for. On the other hand this fact is satisfactory to sum that the sign under examination is different from the examples provided by the applicant.

Moreover, the grid, which is claimed to be distinctive, is not only covered to high degree by the “Blue” element in the evidence provided by the applicant, but the rid itself is slightly different (more round on the semi-circular elements on both sides) in the comparison to the applied sign for (which is more oval shaped in the same elements), which only confirms that the grid itself is not the most prominent part of the sign to which the relevant consumers pay attention to (see pictures below).

The shape of the spherical microphone head in question cannot be perceived by the public as an indication of origin, the overall impression created by the appearance of this shape (i.e. one of basic geometrical shapes) does not depart significantly from the norm or customs of the sector and thereby does not fulfil its essential function of indicating origin is devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 31; 24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 37).

In view of the foregoing the Office finds that the shape mark applied for consists of a combination of elements that are typical of the goods in question. The shape in question is not markedly different from various basic shapes for the goods in question commonly used in trade, but is simply a variation thereof. Since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes commonly used for the applicant’s goods and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

Accordingly, the mark applied for does not enable the average consumer, who is reasonably well-informed and reasonably observant and circumspect, to identify the goods in question and distinguish them from those of another commercial origin. Therefore, it is devoid of distinctive character for those goods.

In the present case the objectionable goods covered by the mark applied for are aimed at both average consumers and audio technology professionals. The awareness of the relevant public will be high for the professional public and average for general consumers who are reasonably well-informed and reasonably observant and circumspect.

The mark applied for is three-dimensional, therefore, the examination of the absolute grounds for refusal in the case at hand is based on the relevant public across the European Union. It can be safely assumed that the sign will most certainly be recognised and understood as a commonly used spherical microphone head. The relevant public will perceive the sign intuitively.

The sign contains a meaningful, simple and straightforward shape, which is not surprising or unexpected, therefore it is not able to distinguish the goods in question from the same goods provided by others.

There is nothing that enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods applied for. The sign is not capable of distinguishing any business undertaking from another one in terms of the commercial origin of the claimed goods (30/11/2017, T– 50/17, TO CREATE REALITY, EU:T:2017:855, § 40).

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).

As regards the applicant’s argument that a similar registration has been accepted by the EUIPO, 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).

The Office has taken this previous registration into consideration. The previous registration has been found to be distinctive in its own right. The mere fact that they consist of the microphone cannot support registrability of the mark at hand.

Whether the Office has already registered the same shape (which is not the case in the quoted previous registration) for the same goods does not help the applicant. No identical registrations by the EUIPO in respect of identical or similar trademarks constitute grounds for allowing applications that are devoid of distinctive character (13/02/2008, C-212/07, ‘Hairtransfer’, § 44, EU:C:2008:83). As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, ‘Streamserve’, § 67, EU:T:2002:43).

It must further be pointed out that the trade mark is not the subject of these proceedings and may at best be examined in invalidity proceedings, which may be initiated by anyone (24/05/2012, C-196/11 P, ‘F1-Live’, EU:C:2012:314). 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 principle of equal treatment must be reconciled with the principle of legality (e.g. ‘Streamserve’; 02/05/2012, T-435/11, § 67, ‘UniversalPHOLED’, EU:T:2012:210).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign will be perceived by the consumers as pointing to the commercial origin of the goods applied for. For the reasons mentioned above, the term does not possess any actual distinctive character for the objected goods and services, pursuant to Article 7(1)(c) and 7(1)(b) and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the objected goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its non-distinctive sense.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for this European Union trade mark is declared to be non-distinctive pursuant to Article 7(1)(b) across the European Union for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Jiri JIRSA