Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 27/08/2019

FILEMOT TECHNOLOGY LAW LTD

25 Southampton Buildings

London WC2A 1AL

UNITED KINGDOM

Application No:	018024119
Your reference:	K1041-00277
Trade mark:	DYNAMICBLU
Mark type:	Word mark
Applicant:	Circadian Zirclight Inc Two Main Street Stoneham Massachusetts 02180 UNITED STATES (OF AMERICA)

The Office raised an objection on 18/04/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 17/06/2019 which may be summarised as follows.

1. The use of the word “apparata” in reference to medical apparatus is not understandable by an English speaking person.

2. The examiner has chosen, despite Brexit, to focus on the English speaking consumer and this has not been further characterised. The consumer is composed of both an average public in reference to class 11 (lamps for domestic use) and specialised public (medical lamps) in class 10.

3. As the Office has suggested two different descriptive meanings for the applied for sign, this shows that to the consumer there is not an immediately apparent meaning so that the consumer is likely to be led to the more obvious conclusion that the sign for which application has been sought is a trade mark indicative of origin.

4. The conjoining of terms and the miss‐spelling are enough to grant trade mark significance to the term in the consumer’s mind without further thought.

5. The sign does not directly describe any characteristic of the goods applied for.

6. The evidence on which the examiner relies is a Pantone reference that indicated DYNAMIC BLUE (not DYNAMICBLU but a different term) is used as a proprietary name of a paint colour offered by Sherwin‐Williams. This would appear to be a US based Paint Company offering paint and not lamps. This is not directed at the English speaking European Union market and there is no suggestion that the reputation of their paint colours would spill over into the EU market for lamps.

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 re-examination giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods:

Class 10 Light emitting medical devices, including light emitting (LED) devices for regulating bio-active wavelengths in lights; light therapy apparatus.

The objection is maintained for the remaining goods, namely:

Class 9 Lamps and light fixtures; lamps; LED luminaires.

The reasons are as follows.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (23/05/1978, C-102/77, ‘Hoffmann-La Roche’, EU:C:1978:108; 18/06/2002, C-299/99, ‘Philips/Remington’, EU:C:2002:377).

Under Article 7(1)(c) EUTMR, “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service” 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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C 191/01 P, ‘Doublemint’, EU:C:2003:579, § 31).

“The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought” (26/11/2003, T 222/02, ‘Robotunits’, EU:T:2003:315, § 34).

It must be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (consistent case-law on absolute grounds for refusal).

Although the descriptiveness and/or distinctiveness of a trade mark may comprise an assessment of the individual elements separately, it must, in any event, depend on an appraisal of the mark as a whole. In order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (‘SAT.2’).

The marks referred to in Article 7(1)(b) are, in particular, those which 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).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (‘SAT.2’). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

Preliminary remarks

The Office acknowledges that the most common plural form for the word “apparatus” consists in “apparatus” or “apparatuses” according to the Collins Dictionary. Nevertheless, more rarely, the term “apparata” can be found in relation to medical devices as the plural form of apparatus. In any case, the Office believes that the term in question did not prevent the applicant from understanding the overall meaning of the objection as shown by the detailed reply it provided.

As in regard to the claim that the Office should not take into consideration, in its objection, the English-speaking public residing in the United Kingdom because of the political events relating to Brexit, it argues as follows.

The Office cannot take into consideration an unfounded argument such as the one that the English-speaking public in the United Kingdom territory should not be taken into consideration as not being part of the EU territory following the current Brexit events. Until the United Kingdom does not officially become a non-EU Member State, it is still part of the Union. In this regard, the EUTMR and other associated norms, are of full application to the sign for which protection is sought in accordance to Article 1, EUTMR. Accordingly, if the applied for sign is descriptive and non-distinctive to the relevant English-speaking public, Article 7(1), EUTMR is triggered.

Furthermore, the Office points out that the public by reference to whom the absolute grounds of refusal must be assessed, the English-speaking public, does not only consists of the one from the United Kingdom, but it also must be taken into consideration the Member States in which English is an official language as Ireland and Malta.

Meaning of the sign and lack of distinctiveness

The Office disagrees with the argument that the applied for sign can function as a trademark according to the fact that it has more than one possible descriptive meaning.

In the letter of 18/04/2019 the Office stated that the relevant English-speaking consumer would understand the sign as heaving the meaning of “continually changing colour”, or indicating a specific shade of blue. The Office pointed out two possible meanings for the sign under exam to show its descriptiveness focusing mainly on the meaning of “DYNAMICBLU” as a specific shade of the colour blue.

As the applicant claimed that the meaning of “continually changing colour” indicated in the former objection has not been sufficiently explained, the Office will provide further argumentation.

In any case, the Office points out that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (‘Doublemint’, § 32, emphasis added.)

As already stated in the objection on 18/04/2019, the sign can be also intended having the meaning of “continually changing colour”.

The applied for sign consists of a combination of components that is descriptive as regards the contested goods. The fact that a compound mark consists only of descriptive components devoid of distinctive character as regards the goods concerned is evidence which generally justifies the conclusion that that sign, considered as a whole, is also devoid of distinctive character in relation to those goods. Such a conclusion can be dismissed only if concrete evidence, such as, for example, the way in which the various components are combined, indicates that the compound trade mark, considered as a whole, is greater than the sum of its parts (31/01/2002, T-323/00, SAT.2, ECLI:EU:T:2002:172, § 49, and the Opinion of Advocate General Ruiz-Jarabo Colomer in case 11/03/2004, C-363/99, Koninklijke KPN Nederland, EU:C:2002:65, point 65).

In the instant case, the consumer, when confronted with the mark, will perceived the compound mark as formed by the words “DYNAMIC” and “BLU”. These indicate that the lamps (non-medical) emit a blue light that has a characteristic that is opposed from being static (according to the Oxford Dictionary). Thus, the Office believes that the consumer will perceive the sign as indicating that that the light(s) emitted by the lamps (non-medical) are blue and are not static. ‘BLU’ is the Italian word for blue, but which will be instantly read as a variation of the English word ‘blue’, at least by the English-speaking public (03/12/2015, R 1400/2014-4, ‘BLUE AROMA / BLUAROMA’).

The combination of a term designating a characteristic of the goods concerned, which is likely to be taken into account by the relevant public when making its choice, with one or more laudatory terms does not mean that the trade mark applied for, considered as a whole, is greater than the sum of their parts. In that connection, it must be observed that the structure of the sign for which protection has been sought, which is distinguished essentially by the fact that the words “DYNAMIC” and “BLU” are joined together is not imaginative or striking. In modern English, especially in the language used in advertising and promotion, a ‘simplified’ spelling of English words is often used. Further, although the second word of the applied for sign is misspelled, it is a banal misspelling common in trade and commercial circles, and is obviously meant to represent the word “blue”.

Therefore, it must be held that the mark applied for, considered as a whole, is likely to be commonly used in trade for the presentation of the goods referred to in the application and therefore it is devoid of any distinctive character in relation to the contested goods.

Considering the second meaning indicating a shade of blue, the Office believes that the applied for sign is descriptive and non-distinctive in relation to the contested goods.

The contested mark is “DYNAMICBLU”, which is a combination of “dynamic” and “blu(e)” and, as notified the Office’s letter of 18/04/2019, represents the actual name (Dynamic Blue) of an international recognised colour, commonly used in the Sherwin-Williams colour scale. Therefore, the sign applied for would be seen by the relevant consumer as the name of a colour, and not as a trade mark.

The applicant argues that Sherwin-Williams is a US based Paint Company offering paint. For this reason, the use of Dynamic Blue would not be directed at the English speaking European Union market. Further, Dynamic Blue is used to indicate a specific shade for paints and the relevant consumer would not directly associate the colour denomination with the contested goods.

As correctly stated by the applicant, Sherwin-Williams Company is an American company in the general building materials industry. However, the company has a turnover of $465.20 and 4,620 stores locate in the whole world included in United Kingdom, Ireland and Malta. For this reason the Office believes that the colour denomination of “Dynamic Blue” contained in the Sherwin-Williams colour database, and corresponding to the Pantone 640 of the Pantone official database, would be perceived by the relevant public as the indication of a specific shade of blue that, thus, will be perceived by the relevant public as indicating the light’s colour or the colour of the objected goods.

For all the reasons outlined above, the Office must find that the prima facie objection to the mark “DYNAMICBLU” obtains for “Lamps and light fixtures; lamps; LED luminaires”. The sign remains what it is, in connection with the goods, indicative of a recognised specific shade of blue for the goods in question.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18024119 is hereby rejected for the following goods:

Class 11 Lamps and light fixtures; lamps; LED luminaires.

The application may proceed for:

Class 10 Light emitting medical devices, including light emitting (LED) devices for regulating bio-active wavelengths in lights; light therapy apparatus.

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.

Peter SCHYDLOWSKI