Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/09/2019

AWA Sweden AB

Box 5117

SE-200 71 Malmö

SUECIA

Application No:	018034200
Your reference:	31046745
Trade mark:	NON SI PUÒ RUBARE QUELLO CHE NON SI PUÒ VEDERE
Mark type:	Word mark
Applicant:	Verisure Sàrl Chemin Jean-Baptiste Vandelle 3/3 A CH-1290 Versoix SUIZA

1. The Office raised an objection on 09/04/2019 pursuant to Article 7(1)(b) EUTMR 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 submitted its observations on 03/06/2019 which may be summarised as follows:

• The mark NON SI PUÒ RUBARE QUELLO CHE NON SI PUÒ VEDERE applied for as a whole is distinctive in relation to the goods and services applied for.

• It clear from case law that advertising and promotional slogans are able of indicating the commercial origin of goods and services, for instance if they constitute a play on words, have some particular originality or resonance, have an unusual syntactical structures, or use linguistic and stylistic devices such as alliteration, rhyme and paradox.

• The mark is a playful and thought-provoking phrase with no direct association to the relevant goods and services, but it is rather suggestive. The mark introduces an element of conceptual intrigue and surprise and will be perceived as unexpected.

• The expression is not a common phrase in the EU and will be perceived as a sign of the applicant.

• The applicant refers to other slogans that have been accepted by the Office, namely ‘THEY CAN’T STEAL WHAT YOU DON’T HAVE’ and ‘YOU CAN SEE EVERYTHING FROM HERE’. It is submitted that the mark applied for is at least as distinctive as the slogans mentioned.

• The mark cannot be considered to be devoid of any distinctive character in relation to all the goods applied for. The applicant gives some examples of goods in class 9 which it finds the mark should be accepted for.

• The applicant refers to case law in support of its arguments.

3. Pursuant to Article 75 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.

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). 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).

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).

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).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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 cannot find anything distinctive about the mark NON SI PUÒ RUBARE QUELLO CHE NON SI PUÒ VEDERE in relation to the goods and services applied for.

As shown in the Notice of grounds for refusal, the Italian words NON SI PUÒ RUBARE QUELLO CHE NON SI PUÒ VEDERE means “you can`t steal what you can`t see”.

The goods and services objected to all relate to security and protection and could form part of a theft protection system that makes objects impossible to see, and therefore impossible to steal. NON SI PUÒ RUBARE QUELLO CHE NON SI PUÒ VEDERE is a reassuring slogan that indicates that the applicant’s company protects its clients from theft by making objects and possessions impossible for a potential burglar to see, .e.g. by emitting fog and smoke.

Even if not all goods and services involve e.g. the emitting of fog/smoke to impair the vision of a burglar, they could form part of such a system such as sensors, surveilling cameras, motion detectors, software and other goods that make the system function as well as services such as the rental of and consultancy about such systems.

The expression NON SI PUÒ RUBARE QUELLO CHE NON SI PUÒ VEDERE would merely be perceived as promotional information that conveys a message of certain benefits of the goods and services (that the goods and services will protect the consumer from theft since valuable objects will be impossible to see and therefore steal).

The applicant argues that the objection should at least not cover Fire-extinguishing apparatus; electric and electronic doorbells; sound recording apparatus; artificial intelligence apparatus; wireless sensors; intercommunications apparatus in class 9.

“Fire extinguishing apparatus” could e.g. be used to put out the smoke after the anti-theft system has been triggered. “Electric and electronic doorbells” could incorporate monitors and form part of a theft protection system. “Sound recording apparatus; artificial intelligence apparatus; wireless sensors; intercommunications apparatus” are also devices used in security e.g. to detect intrusion.

When viewing the mark, the relevant Italian-speaking consumers will simply see it as a typical promotional message with a clear message of what the goods and services can achieve.

There is no element in the mark that would lead the relevant consumers to believe that the mark is an indication of commercial origin.

As regards the applicant’s argument that the expression is not a common phrase in the EU, this is not the determining criteria for examining the distinctive character of the signs. In order to refuse the application under Article 7(1)(b) CTMR, it is sufficient to find that the trade mark applied for, in relation to the services claimed, would not allow the relevant public to distinguish the applicant’s goods and services from those of other traders (see decision of 1 March 2005, R 1034/2004-1, -‘MAKING THE WORKPLACE WORK BETTER’, paragraph 14).

The applicant refers to among others the judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik. While it is true that the Vorsprung durch Technik judgment did not exclude promotional formulas from registration, it did not indicate that all slogans are distinctive and may be registered just because of the fact that they are promotional formulas. In paragraph 45 of that judgment the ECJ stated that “in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character”. (Emphasis added).

This means that the relevant public has to perceive a promotional formula as a source originator in order for it to be considered as distinctive. The applicant did not prove that this is the case. The mark is a plain word mark with a straightforward message.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, 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 (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 35). equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

Furthermore, the Office has refused numerous slogan marks, see for instance:

017644204 - See Nothing Else

008658908 - what you see is what you keep

015396311 - NON VENDE SOGNI MA SOLIDE REALTA

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 018034200 is hereby rejected for hereby rejected for the following goods and services:

Class 7 Artificial smoke generating machines.

Class 9 Safety, security, protection and signaling devices; protective and safety equipment; alarm signaling receivers and transmitters; alarms and warning equipment; alarms; alarm installations; anti-intrusion and anti-theft alarms; electric alarms for fire and smoke; fire-extinguishing apparatus; life-saving apparatus and instruments; electronic personal alarm devices; electric and electronic doorbells; security alarms; personal security alarms; alarm systems, safety alarms and security alarm systems; alarm central units; alarm display units; alarm monitoring systems; alarm panels; control panels and keypads for security alarms; wireless control panels and keypads for security alarms; security control and security surveillance apparatus; security warning apparatus; electric and electronic security apparatus and instruments; access control devices; electronic and biometric apparatus and installations for access control; automatic and electric access control units; sound recording apparatus; identity checking units; identity checking units, namely, encoded identity cards, magnetic identity cards, fingerprint readers, face and voice recognition apparatus, PIN-code readers, electronic tags and electronic security tags; data storage devices and access control devices, only regarding protection against burglary, fire, assaults, physical damage and theft; cards encoded with security features for identification purposes, only regarding protection against burglary, fire, assaults, physical damage and theft; inductive readers, card readers, inductive carriers and data carriers, only regarding protection against burglary, fire, assaults, physical damage and theft; automatic access security apparatus; electric access security apparatus; automatic security barriers; measuring, detecting and monitoring instruments, indicators and controllers; artificial intelligence apparatus; sensors and detectors; wireless sensors; electric, electrical and electronic sensors; digital sensors; infrared sensors, active and passive infra-red sensors; alarm sensors; heat sensors; smoke sensors; fire sensors; temperature sensors; gas sensors; light sensors; motion sensors; movement sensors; position sensors; pressure sensors; photoelectric sensors; object detecting sensors; LED position sensors; microwave type intruder sensors; optical sensors; motion sensors for security lights; smoke detectors; fire detecting apparatus; fire-protection installations; heat detectors; motion detectors; leak detectors; laser detectors; infrared detectors, active and passive infrared detectors; intruder detection apparatus; door opening and closing detecting sensors; telecommunications apparatus and mobile and digital telecommunications apparatus, only regarding protection against burglary, fire, assaults, physical damage and theft; intercommunications apparatus; instruments and signal processing apparatus, audio devices and audio receivers, video devices and video receivers, and optical apparatus and instruments for monitoring, remote control, and alarm purposes; apparatus for recording, transmission or reproduction of machine-network communication; television, video, telephone and radar units; radar systems, apparatus and displays; electrical cells and batteries; plug-in connectors and plug-in electrical connectors; cameras; digital cameras; infrared cameras; security cameras; surveillance cameras; motion-activated cameras; network monitoring cameras; intelligent gateways for real-time data analysis; devices and apparatus for remote control of electronic and electrical apparatus and household appliances; systems for downloading and updating of software to and from electronic and electrical apparatus and household appliances; application software; mobile application software; software applications for use with mobile devices; security software; computer software for the remote control of security apparatus; software to control building environmental, access and security systems; software for alarm management, data logging, remote monitoring and remote control; remote monitoring units, remote monitoring apparatus; software for remote control of electronic and electrical apparatus and household appliances; fire detecting software; intrusion detection system [IDS] software; software for communications in machine-networks, software for safe communications in machine-networks, software development tools for machine communication and electronic communication; home automation software; building automation software; servers for home automation; artificial intelligence software; all of the above software only regarding protection against burglary, fire, assaults, physical damage and theft; electric and electronic locks.

Class 45 Safety, rescue, security and enforcement services; security services for the protection of property and individuals; monitoring and alarm monitoring services, only regarding protection against burglary, fire, assaults, physical damage and theft; security monitoring services; electronic monitoring services for security purposes; monitoring of security systems, burglar and security alarms; security consultancy, only regarding protection against burglary, fire, assaults, physical damage and theft; monitoring services relating to security, including on-line, including in the form of action management and feedback; security guarding for facilities, guarding of departures and arrivals of individuals; rental of alarms and other security equipment; security marking of goods; information services regarding safety, rescue, security and enforcement services, only regarding protection against burglary, fire, assaults, physical damage and theft.

The application may proceed for the remaining services:

Class 45 Position finding services of individuals and pets; tracking of stolen property; personal body guard services; legal services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Cecilia ÅLIN