Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/06/2019

AL & PARTNERS S.R.L.

Via C. Colombo ang. Via Appiani

(Corte del Cotone)

I-20831 Seregno (MB)

ITALIA

Application No:	018012900
Your reference:
Trade mark:	Diongjxiangjinx
Mark type:	Word mark
Applicant:	Shenzhen Dongjiangjin Gift Co., Ltd. Rm.407,4F,Bldg.B,Jinguang Technology Park,No.17-1 South Pingxi Rd.,Pingdi St.,Longgang Dist. Shenzhen REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 18/03/2019 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 07/05/2019, which may be summarised as follows:

1. According to the Office’s practice, the lack of any express meaning of the sign should be considered as the basis for the acknowledgement of its distinctive character. It is quite common that word marks registered by the Office are signs with no express meaning in any EU languages to avoid objections of lack of distinctiveness.

2. The lack of complexity of a sign is not a requirement for the registration of a trademark. Neither the EUTMR nor the Office’s guidelines mention that the lack of ‘complexity’ is a hindrance for registration of a trade mark.

3. Neither the EUTMR nor the Office’s guidelines mention that the fact that a sign is easy to memorize is a requirement for registration of a trade mark. Everyone has a different ability to memorize words and letters and the examiner did not refer to any general criteria which have been used to establish that the sign cannot be memorized.

4. When comparing two signs to assess the risk of confusion between them, it is quite common to give more relevance to the beginning of the signs, because the average consumer does not perfectly retain in mind a trademark.

5. The sign contains the company name of the applicant and therefore the commercial origin of the product is clearly indicated.

6. The applicant provides custom declarations to prove that the mark has been used.

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.

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).

The applicant submitted that according to the Office’s practice, the lack of any express meaning of the sign should be considered as the basis for the acknowledgement of its distinctive character as it is quite common that word marks registered by the Office are signs with no express meaning in any EU languages. The Office agrees that this is one of the criteria for the sign to be registered, however the examination of the trade mark applications is much more complex and also other aspects and provisions have to be taken into consideration. The Office’s Guidelines clearly state that the reason for the refusal lies inter alia in the fact that some signs do not convey any ‘message’ that could make the sign easily memorable for consumers. The acceptability of a mark must depend upon whether the sign is distinctive per se, that is, whether the average consumer will perceive the sign as a memorable one that serves to indicate that the goods or services are exclusively associated with one undertaking.

In the case at issue, most consumers would not take a second look at a sign ‘Diongjxiangjinx’ that is perceived as too long and incomprehensible. The consumers are daily exposed to innumerable advertising messages in all media, and they will not spend any time whatsoever on trying to comprehend a trade mark that does not make sense to them.

In this regard, it must be taken into account that the average consumer tends not to look at things analytically. A trade mark must therefore enable average consumers of the goods/services in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention (judgments of 12/02/2004, C-218/01, Perwoll, EU:C:2004:88, § 53; 12/01/2006, C-173/04 P, Standbeutel, EU:C:2006:20, § 29).

Therefore, the mark application ‘Diongjxiangjinx’ is considered to be too complex because it is composed of an incoherent string of letters that do not form a word that is found in any of the European Union languages, and is, in addition, unpronounceable in all the European Union languages. When viewing the mark the average consumer would only see the mark as a very long string of jumbled letters with no sense and meaning. As mentioned above, such a sign is impossible to memorize by the average consumer.

As regards the applicant argument that the examiner did not refer to any general criteria which have been used to conclude that the sign cannot be memorized, it is established case law that signs with characteristics listed above cannot easily be memorized by the average consumers and enable them to perceive the goods as coming from a particular undertaking. For ease of reference, following exemplary judgements are quoted:

10/09/2015, T‑143/14, YELLOW (colour mark), EU:T:2015:616, § 41:

Lastly, when considering the use of particles arranged in a random pattern, the Board of Appeal was also entitled to consider that the pattern in question was a feature which the relevant public will not be able to commit to memory and, therefore, it cannot be regarded as a feature indicating the commercial origin of the goods and services concerned….

09/12/2010, T‑307/09, Naturally active, EU:T:2010:509, § 33 :

Contrary to the applicant’s assertion, the combination of words in the word sign NATURALLY ACTIVE will not therefore be perceived as unusual by consumers, but as a phrase having the meaning indicated by the Board of Appeal in paragraph 20 of the contested decision. The word sign at issue contains nothing that is memorable in terms of a play on words, a rhyme, a subliminal message or unusual syntax.

30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 32:

Furthermore, there is nothing about the mark applied for, ‘Mehr für Ihr Geld’, that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods designated.

The applicant’s reference to the comparison of two signs in order to assess risk of confusion cannot be applied in the case at issue as it is a different exercise from examining a mark’s registrability under Article 7(1)(b) EUTMR.

Moreover, the applicant submitted that it is quite common to give more relevance to the beginning of the sign, because the average consumer does not perfectly retain in mind a trademark. However, this argument has to be disregarded as this is not part of the process of examination on absolute grounds for refusal to evaluate only a beginning of the sign. According to the case law the trade mark application has to be examined as a whole and all elements of the sign have to be taken into consideration.

The argument that the sign ‘Diongjxiangjinx’ contains the company name of the applicant and therefore the commercial origin of the product is clearly indicated has to be refuted. This is because for establishing a company name the test on distinctiveness is not a legitimate condition.

As regards the applicant’s argument that if a sign is difficult to memorize the extensive use of the sign and advertising campaigns can make the sign easy to remember, the Office points out that the applicant failed to prove distinctive character and acquired distinctiveness in relation to the goods for which registration is sought, as it did not provide any relevant evidence, such as surveys, evidence of the market share held by the mark, statements from chambers of commerce, industry or other trade and professional associations, sales volumes, advertising material or evidence of the duration of use, etc.

According to settled case law, since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on its 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 (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48). The fact that the applicant provided two custom declarations is not sufficient to prove distinctiveness of the sign. As already mentioned, the Office is not obliged to search and furnish the evidence; rather, this duty is incumbent on the applicant.

For the abovementioned reasons, and pursuant to Article 7(1)(b)EUTMR, the application for European Union trade mark No 18 012 900 ‘Diongjxiangjinx’ is hereby rejected for all the goods applied for, namely:

Class 14 Precious metals, unwrought or semi-wrought; boxes of precious metal; presentation boxes for jewelry; clocks; wristwatches; chronometers; watches; necklaces [jewellery, jewelry (Am.)]; bracelets [jewellery, jewelry (Am.)]; jewellery; rings [jewellery, jewelry (Am.)]; brooches [jewellery, jewelry (Am.)]; earrings; paste jewelry [costume jewelry].

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.

Monika Karolina SZALUCHO