Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 15/07/2019

AL & PARTNERS S.R.L.

Via C. Colombo ang. Via Appiani

(Corte del Cotone)

I-20831 Seregno (MB)

ITALIA

Application No:	018020624
Your reference:
Trade mark:	Anxwaqngdmvda
Mark type:	Word mark
Applicant:	Shenzhen Anwangda Kitchenware Co., Ltd. Rm406,4/F,BLDG.B,Jinguang Science&Technology Park,No.17-1 Pingnan Rd, Pingdi Str., Longgang Dist. Shenzhen 518000 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 19/03/2019 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 13/05/2019, 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. If we should take the ‘complexity’ of a word mark into consideration to assess the eligibility for registration under Article 7(1)(b) EUTMR, at least some guidance to distinguish between a registrable ‘complex’ sign and an unregistrable ‘complex’ sign should be present in the Office’s Guidelines.

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).

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. Furthermore, the Office’s Guidelines clearly state that in certain cases the refusal of a trade mark application is supported by the fact that a sign does not convey any ‘message’ that could make it easily memorable for consumers (see page 29 of the Guidelines for Examination of European Union trade marks, Part B Examination, Section 4, Absolute Grounds for refusal, Chapter 3, Non-distinctive trade marks (Article 7(1)(b) EUTMR)). The acceptability of a mark must depend upon whether the sign serves to identify the product and/or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.

Furthermore, the applicant argued that if we should take the ‘complexity’ of a word mark into consideration to assess the eligibility for registration under Article 7(1)(b) EUTMR, at least some guidance to distinguish between a registrable ‘complex’ sign and an unregistrable ‘complex’ sign should be present in the Office’s Guidelines. It must be mentioned that the Guidelines have been drawn up to reflect the Office’s practice in the most frequent scenarios. They contain general instructions, which have to be adapted to the particularities of a case. Therefore, even if a specific scenario is not reflected in the Guidelines it certainly does not mean that such marks cannot be examined based on general principles and applying other scenarios by analogy.

It must be also recalled that that 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).

Taking into account all the above, the Office maintains that the sign ‘Anxwaqngdmvda’ would be perceived by the relevant public as an unmemorable sequence of letters, which is too long, complex and incomprehensible. The overall complexity of the sign does not allow the individual details of the mark to be committed to memory; or the mark taken as a whole, to be apprehended. The sign 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 any of 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 be memorized 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 factors taken into account in the comparison of two signs in order to assess the likelihood 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.

The applicant argues that in the assessment of likelihood of confusion there is a principal that more relevance is given to the beginning of the sign because the average consumer does not perfectly retain in mind a trademark. For the sake of clarity, it must be mentioned that in the assessment of the likelihood of confusion it is considered that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, in the assessment of the registrability of the sign the fact that the first part of a sign might first catch the attention of the reader bears no relevance as according to the established case law a sign has to be examined as a whole and all its elements have to be taken into consideration.

The argument that the sign ‘Anxwaqngdmvda’ 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 the sign has already been used by the applicant is not a criterion to be taken into account in the examination of a registrability of a sign. It must be recalled that the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question. The mere fact that the sign is used by the applicant cannot automatically indicate such a perception. It is true that Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. However, in such case the applicant should have claimed acquired distinctiveness through use pursuant to Article 7(3) EUTMR and prove it with evidence. It was not done in the case at hand.

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.

For the abovementioned reasons, and pursuant to Article 7(1)(b)EUTMR, the application for European Union trade mark No 18 020 624 ‘Anxwaqngdmvda’ is hereby rejected for all the goods applied for, namely:

Class 21 basins [bowls]; bowls [basins]; bottles; pots; dishes; cups; urns; table plates; glass flasks [containers]; porcelain ware; china ornaments; drinking vessels; vacuum bottles; crystal [glassware]; enamelled glass, not for building; plate glass [raw material].

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.

Sandra KASPERIŪNAITĖ