Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 03/06/2019

AGC Glass Europe

Avenue Jean Monnet 4

B-1348 Louvain-la-Neuve

BÉLGICA

Application No:	018017715
Your reference:	feelinglass/vco
Trade mark:	ShapeYourGlass
Mark type:	Word mark
Applicant:	AGC Glass Europe Avenue Jean Monnet 4 B-1348 Louvain-la-Neuve BÉLGICA

The Office raised an objection on 27/02/2019 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 26/04/2019, which may be summarised as follows:

1. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign.

2. The mere fact that a mark is perceived by the relevant public as a promotional formula is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character. The sign appears indeed, behind a possible promotional or even objective message conveyed, as a play on words that is perceived among others by the relevant English-speaking consumers as an unusual, imaginative and surprising interpellation without any immediate link with the products and services identified.

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.

The Office has decided to waive the objection for the following goods:

Class 9 Television receivers and film and video devices; Image capturing and developing devices; Audiovisual apparatus; Digital video players; Multi-camera systems for vehicles; Video imaging systems.

Class 11 Beverage refrigerators for use in automobiles; Beverage cooling apparatus; Cooling apparatus; Display freezers; Refrigerated cabinets for the storage of drink.

Class 12 Automobiles; vessels [boats and ships]; aircraft; railway rolling stock; two-wheeled motor vehicles; Vehicles for travel by air; Apparatus for locomotion by air; Land vehicles and conveyances; Automotive vehicles; Camper vans; Camping vehicles; Cars; Driverless cars [autonomous cars]; Hybrid cars; Motor homes; Remotely operated vehicles; Trucks; Vehicles for travel by land; Drone; Electric vehicles; Self-driving transport vehicles; Wind powered vehicles; Automatic guided vehicles; Apparatus for locomotion by water; Boats; Yachts; Blinds adapted for vehicles;

The objection is maintained for the following goods:

Class 9 Display screens; Display monitors; Display devices; Tablet monitors.

Class 11 Solar thermal collectors [heating]; Vehicle lighting and lighting reflectors; Display lighting; Flat panel lighting apparatus; Glass covers for lamps; Light-emitting diodes [LED] lighting apparatus; Lighting panels; Lighting fittings; Lighting apparatus; Screens for controlling light; Screens for directing light; Reflectors for light control; Reading lights.

Class 12 Wagons, and structural parts therefor; Dashboards; Doors for vehicles; Glass screens for vehicles; Interior panels for vehicles; Roof linings for vehicles; Protective interiors for vehicles; Protective heat shields for vehicles; Protecting covers [shaped] for vehicles; Side doors for vehicles; Sunshields for use on vehicles; Sun visors [vehicle parts]; Structural parts for trains; Vehicle windows incorporating heaters; Vehicle windows incorporating aerials for radio reception; Windows for vehicles; Anti-theft, security and safety devices and equipment for vehicles; Parts and fittings for air and space vehicles; Parts and fittings for land vehicles; Parts and fittings for water vehicles.

Class19 Doors, gates, windows and window coverings, not of metal; Building glass; Decorative glass [for building]; Building materials consisting of glass; Coatings [building materials]; Colored sheet glass [for building]; Common sheet glass for building; Glazing (Non-metallic -) having fire resistant properties; Glazing elements made from glass; Glass panels.

Class 21 Glass (Semi-worked -) for vehicles; Glass for vehicle windows; Glass panels [semi-finished article]; Glass incorporating electrical conductors; Profiled glass [semi-finished]; Security glass for making into vehicle windows; Semi-worked glass; Plate glass for cars; Plate glass [raw material]; Luminous glass [not for building]; Laminated flat glass [not for building]; Heat reflecting glass [semi-worked]; Unworked glass [except glass used in building]; Tempered glass [not for building].

Class 40 Bevelling of glass; Colouring glass sheets by surface treatment; Etching of glass; Glass polishing; Glass resurfacing; Glass tempering; Glass tinting; Glass-blowing; Laminating of glass sheets; Pattern cutting; Providing material treatment information; Window tinting treatment, being surface coating; Three-dimensional printing [3DP]; Treatment of glass; Cutting of glass.

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).

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).

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).

The Office’s comments are mentioned below respectively about the applicant’s arguments summarised above:

1- The Office completely agrees with the applicant that it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign. The assessment has already been made in the light of this principle.

2- 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).

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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The meanings of the words ‘SHAPE’, ‘YOUR’ and ‘GLASS’ composing the trade mark can be supported by the following dictionary references:

SHAPE ‘(Verb) Give a particular shape or form to’ (information extracted from Oxford English Dictionary on 27/02/2019 at https://en.oxforddictionaries.com/definition/shape ).

YOUR ‘(Possessive Determiner) 1-Belonging to or associated with the person or people that the speaker is addressing. 2-Belonging to or associated with any person in general.’ (information extracted from Oxford English Dictionary on 27/02/2019 at https://en.oxforddictionaries.com/definition/your ).

GLASS ‘(Noun) A hard, brittle substance, typically transparent or translucent, made by fusing sand with soda and lime and cooling rapidly. It is used to make windows, drinking containers, and other articles.’ (information extracted from Oxford English Dictionary on 27/02/2019 at https://en.oxforddictionaries.com/definition/glass ).

The sign for which protection is sought, ‘ShapeYourGlass’, would simply be perceived by the relevant English-speaking public as a promotional laudatory slogan, the function of which is to communicate a customer service statement. Moreover, in the present case, the relevant English-speaking public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to indicate that the goods are or contain customized glass, shaped in non-traditional forms according to consumer's need and that the services enable consumers to obtain glass custom made for whatever use that might have.

Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1) (b) and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 017 715 is hereby rejected for the following goods/services:

Class 9 Display screens; Display monitors; Display devices; Tablet monitors.

Class 11 Solar thermal collectors [heating]; Vehicle lighting and lighting reflectors; Display lighting; Flat panel lighting apparatus; Glass covers for lamps; Light-emitting diodes [LED] lighting apparatus; Lighting panels; Lighting fittings; Lighting apparatus; Screens for controlling light; Screens for directing light; Reflectors for light control; Reading lights.

Class 12 Wagons, and structural parts therefor; Dashboards; Doors for vehicles; Glass screens for vehicles; Interior panels for vehicles; Roof linings for vehicles; Protective interiors for vehicles; Protective heat shields for vehicles; Protecting covers [shaped] for vehicles; Side doors for vehicles; Sunshields for use on vehicles; Sun visors [vehicle parts]; Structural parts for trains; Vehicle windows incorporating heaters; Vehicle windows incorporating aerials for radio reception; Windows for vehicles; Anti-theft, security and safety devices and equipment for vehicles; Parts and fittings for air and space vehicles; Parts and fittings for land vehicles; Parts and fittings for water vehicles.

Class19 Doors, gates, windows and window coverings, not of metal; Building glass; Decorative glass [for building]; Building materials consisting of glass; Coatings [building materials]; Colored sheet glass [for building]; Common sheet glass for building; Glazing (Non-metallic -) having fire resistant properties; Glazing elements made from glass; Glass panels.

Class 21 Glass (Semi-worked -) for vehicles; Glass for vehicle windows; Glass panels [semi-finished article]; Glass incorporating electrical conductors; Profiled glass [semi-finished]; Security glass for making into vehicle windows; Semi-worked glass; Plate glass for cars; Plate glass [raw material]; Luminous glass [not for building]; Laminated flat glass [not for building]; Heat reflecting glass [semi-worked]; Unworked glass [except glass used in building]; Tempered glass [not for building].

Class 40 Bevelling of glass; Colouring glass sheets by surface treatment; Etching of glass; Glass polishing; Glass resurfacing; Glass tempering; Glass tinting; Glass-blowing; Laminating of glass sheets; Pattern cutting; Providing material treatment information; Window tinting treatment, being surface coating; Three-dimensional printing [3DP]; Treatment of glass; Cutting of glass.

The application may proceed for the remaining goods.

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.

Ali KÜÇÜKŞAHİN