Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/08/2019

SCHIEDERMAIR RECHTSANWÄLTE Partnerschaftsgesellschaft von Rechtsanwälten und Steuerberatern mbB

Eschersheimer Landstr. 60

D-60322 Frankfurt am Main

ALEMANIA

Application No:	018025618
Your reference:	117-19SV/jf
Trade mark:	DOLLAR MARKER
Mark type:	Three-dimensional
Applicant:	Mr. Riazuddin son of Fayyazuddin D-85 S.I.T.E Mangho Pir Road Karachi 75700 PAKISTÁN

1. Summary of the facts

The Office raised an objection on 29/03/2019 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.

2. The applicant’s observations

The applicant submitted its observations on 11/04/2019, which may be summarised as follows.

The grounds for refusal stated in the Office’s notice are not convincing. The word ‘DOLLAR’ has no descriptive meaning in relation to writing instruments. The relevant public might think of the US currency or another currency on reading the word ‘DOLLAR’, but under no circumstances would one think of writing instruments.

The pens marked with the sign ‘DOLLAR MARKER’ are normal text highlighters or markers. In no case would the relevant public perceive the term ‘DOLLAR MARKER’ as designating devices for detecting counterfeit banknotes.

All the products listed by the examiner as examples have the terms ‘counterfeit’ and/or ‘detector’ in their designation. These products are also sold for a completely different purpose and target group as normal marker pens. The sign ‘DOLLAR MARKER’ does not allude at all to a counterfeit detection device.

The word ‘DOLLAR’ is the brand and a part of the company name Dollar Industries Private Limited, a Pakistani enterprise manufacturing writing instruments. The applicant is the owner of this enterprise.

Since the word ‘DOLLAR’ does not indicate the kind and intended purpose of the goods for which protection is sought, the practice of the Office has been to register three-dimensional marks bearing the word ‘DOLLAR’ together with a descriptive element for writing instruments. Examples of such registrations are EUTM No 15 400 435 ‘DOLLAR MARKER’ and EUTM No 14 448 609 ‘DOLLAR Pointer Soft-Liner’. In addition, other writing instruments bearing a non-descriptive designation on their body have been registered as three dimensional trade marks. Examples of such registrations are German registration No 39 761 387 ‘STABILO BOSS LUMINATOR’ and EUTM No 14 019 129 ‘PIANO CLEAR’.

3. Decision

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. This applies notwithstanding that the ground of non-registrability obtains in only part of the European Union.

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).

For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the product 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 (29/04/2004, C-456/01 P & C-457/01 P, Tabs (3D), EU:C:2004:258, § 34; 08/04/2003, C-53/01, C-54/01 & C-55/01, Linde, EU:C:2003:206, § 40). For that purpose, the mark does not need to convey exact information about the identity of the manufacturer of the goods or the supplier of the services. It is sufficient that the mark enables the consumer, without any possibility of confusion, to distinguish the goods or services that it designates from those which have a different trade origin, and to conclude that all the goods or services bearing the mark have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality.

(19/09/2001, T-335/99, T-336/99 & T-337/99, Tabs (3D), EU:T:2001:219, § 43; 29/9/1998, C-39/97, Canon, EU:C:1998:442, § 28).

Article 7(1)(b) EUMR makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, it is also clear from the established case-law that as far as assessing distinctiveness in relation to Article 7(1)(b) EUTMR is concerned, every trade mark, of whatever category, must be capable of identifying the goods and services for which registration is sought as originating from a particular undertaking, and thus to distinguish the goods and services concerned from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark.

The criteria for assessing distinctiveness are the same for different categories of trade marks. Therefore, for signs consisting of the shape of the goods themselves, no stricter criteria apply than for other marks.

The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of the goods and services at issue.

In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T 234/01, Orange und Grau, EU:T:2003:202, § 32).

It is clear from the wording of the notice of refusal of 29/03/2019, that the Office has, in assessing the distinctive character of the three-dimensional mark applied for, duly applied EUTMR and taken into account established case-law on the matter.

Despite the applicant’s observations, the Office still considers that for the relevant English-speaking consumer the three-dimensional mark

applied for, taken as a whole, is devoid of any distinctive character for ‘writing instruments’ for which protection is sought.

The applicant has not contested the Office’s view that the shape of the marker pen concerned is not markedly different from various basic shapes commonly used in trade for the goods at issue and that the shape, therefore, is non-distinctive.

However, the applicant argues, contrary to the Office’s view, that the verbal elements appearing on the body of the marker pen - and in particular the word ‘DOLLAR’ – would render the mark, taken as a whole, distinctive.

The Office does not find the applicant’s observations convincing. The Office acknowledges that the word ‘DOLLAR’ alone might not have a clear descriptive meaning in relation to writing instruments as such, provided of course that it would not be perceived as the price of the goods bearing the mark. However, it must be observed that the assessment in the present case does not concern only the word ‘DOLLAR’ but the words ‘DOLLAR MARKER’, which appear on the body of the marker for which protection is sought.

Despite the applicant’s observations, the Office still considers that the expression ‘DOLLAR MARKER’ is descriptive of the characteristics of the goods in question. According to established case-law, a mark consisting of a neologism or a word composed of elements, each of which is descriptive of characteristics of the goods or services for which protection is sought, is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that would be the case where, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/02/2004, C-265/00, Biomild, § 41).

The requirement described above is not met in the case in question. The expression ‘DOLLAR MARKER’ is made up of a grammatically correct combination of common English words, ‘dollar’ and ‘marker’, the meanings of which, cited by the examiner, have not been disputed by the applicant. Combining the words ‘dollar’ and ‘marker’ simply produces a sign that is merely the sum of its part and is meaningful, designating ‘a marker or a pen which is used to mark or identify something’. On seeing the mark applied to the goods for which protection is sought, the relevant consumers would perceive the words as providing information that the writing instruments concerned are used for marking dollar bills for example to detect if the bills are authentic or counterfeit. Therefore, the relevant consumer would perceive the words as providing information about the kind and intended purpose of the goods in question. Given that the words contained in the mark have a clear descriptive meaning, they are also devoid of any distinctive character.

Money markers also exist on the market as was proved by the articles the Office cited in the notice of grounds for refusal. The Office referred the applicant to the article confirming that ‘counterfeit detector markers’ ‘specially formulated to detect bad bills’ exist, namely

(https://www.amazon.com/Sharpie-Counterfeit-Detector-Marker-3-Count/dp/B0042ET0LU (emphasis added).

In addition, one of the cited articles explained that:

Counterfeit money is big business for criminals. Most criminals know that big bills are scrutinized by retailers to discern whether or not the bills are real. For this reason, some decide to use a lot of fake dollar bills.”

[..]

Use a counterfeit money marker to mark the dollar bill. If the dollar bill is fake, the mark will turn a certain color. The exact color of the mark will vary, depending upon the marker you are using. Read the money marker instructions to determine what color indicates a fake dollar bill.

(https://ourpastimes.com/how-7531068-tell-dollar-bill-real-one.html ).

Furthermore, the advertisement cited, ‘Universal (US & Foreign Currency) Counterfeit Detector Pen (1 and 5 pack)”, explained the features of such a pen as follows:

(https://www.itestcash.com/products/universal-counterfeit-detector-pen-5-pack , emphasis added).

As seen in the above article, the counterfeit detector marker or pen is even recommended for every traveller. Based on this background the applicant’s submission that counterfeit detector pens would only target a special target group is not convincing.

The applicant also argues that counterfeit and/or ‘detector’ markers or pens are sold for a completely different purpose than the ‘writing instruments’ covered by the present application, which, according to the applicant are ‘normal text highlighters or markers’. This argument is irrelevant. According to settled case-law, descriptiveness (and distinctiveness) of a mark 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. In the present case, the goods for which protection is sought cover ‘writing instruments’ in Class 16. Therefore, the specification includes writing instruments for different purposes, and the assessment concerning the mark’s descriptiveness and distinctiveness must be conducted in respect of all kinds or writing instruments and cannot be limited to ‘normal text highlighters or markers’.

The applicant considers that the articles cited by the Office do not serve as evidence that also ‘DOLLAR MARKER’ alone would allude to a counterfeit detection device, as the examples show the terms ‘counterfeit’ and/or ‘detector’ in the designation of such products. The Office does not find this argument convincing. According to established case-law, the fact that an expression is not generally used, does not prevent the relevant consumers from perceiving it as descriptive of the goods (and services) in question when they see it used for the first time in connection with those goods (and services). In addition, it is irrelevant whether there are other, more usual, signs or indications for designating the same characteristics of the goods (or services) referred to in the application for registration than those of which the mark concerned consists (12/02/2004, C-363/99, 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 57). The Office considers that the expression ‘DOLLAR MARKER’ consists exclusively of indications which may serve, in trade, to designate the kind and intended purpose of the goods in question and that there is a sufficiently direct and specific relationship between the mark and the goods in question to enable the relevant public to perceive the mark, immediately and without further thought, as a description of the goods or one of their characteristics.

The applicant’s submission that the word ‘DOLLAR’ is a part of its company name does not change the Office’s view on the descriptiveness of the words ‘DOLLAR MARKER’ contained in the mark. As stated above, the descriptiveness and distinctiveness of a trade mark must be appraised by looking at the mark as a whole and by having regard to the way that it is likely to be perceived by potential consumers of the goods or services at issue. Before a mark applied for can be registered as an EU trade mark, the Office must conduct a thorough examination to ensure that the mark does not fall under any of the grounds for refusal established under Article 7 EUTMR. A company name registration does not need to pass such an examination. The differences between company names and trade marks must also be recalled: a company name is intended to distinguish a particular company from other companies whereas a trade mark is intended to distinguish the product or service of that particular company from competitors’ identical or similar products or services on the market.

The Office has taken into account the earlier EU trade mark registrations and the German trade mark registration cited by the applicant. However, these do not change the outcome reached by the Office even though EUTM No 15 400 435 ‘DOLLAR MARKER’ concerns an almost identical trade mark. Assessing distinctiveness is not an exact science. According to settled case-law, while the Office must strive for a coherent practice in assessing signs with respect to absolute grounds for refusal, 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 or a decision handed down in a Member State (09/10/2002, T-36/01, Glass Pattern, EU:T:2002:245, § 35). Furthermore, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. The mere fact that in other cases relating to other trade marks a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by the EU judicature.

The Office is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73). However, the Court also stated that:

In the light of those two principles, [the Office] must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see, by analogy, with regard to Article 3(1)(b) and (c) of Directive 89/104, order of 12 February 2009 in Joined Cases C‑39/08 and C-43/08 Bild digital and ZVS, summary published at ECR I‑20, paragraph 17).

That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.

Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, order in Bild digital and ZVS, paragraph 18).

Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (OHIM v Erpo Möbelwerk, paragraph 45, and OHIM v BORCO-Marken-Import Matthiesen, paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 62).

(10/03/2011, C- 51/10 P, 1000, EU:C:2011:139, § 74-77)

According to case-law, the considerations stated above apply even if the sign for which registration is sought as a European Union trade mark is composed in a manner identical to that of a mark for which the Office already approved registration as an EU trade mark and which refers to goods or services identical or similar to those for which registration of the sign in question is sought (12/12/2013, C-70/13 P, PHOTOS.COM, EU:C:2013:875, § 45).

The Office stated above, on page 3, that it maintains its view that the three-dimensional shape of a marker for which protection is sought, is non-distinctive. As the Office also maintains, despite the applicant’s observations, that the verbal element contained in the mark applied for, ‘DOLLAR MARKER’, is descriptive, this descriptive element will not confer distinctiveness on that shape either (18/01/2013, T-137/12, Vibrator, EU:T:2013:26, § 34-36). Therefore, the three-dimensional sign applied for, taken as a whole, is devoid of any distinctive character pursuant to Article 7(1)(b) and Article 7(2) EUTMR.

It has been established that the absolute grounds for refusal stated in Article 7(1)(b) and Article 7(2) EUTMR are applicable to the three-dimensional shape mark applied for, in relation to the goods for which protection is sought. Therefore, the mark applied for in relation to the goods for which protection is sought is incompatible with the EUTMR and the applicant cannot reasonably rely on the Office’s earlier decision.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 025 618 is hereby rejected for all the goods claimed.

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.

Tuula RAJALA

ATTACHMENT: Notice of grounds for refusal of application for a European Union trade mark (Article 7 and Article 42(2) EUTMR), of 29/03/2019, 9 pages.