Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/08/2019

WEGNERPARTNER

Georgenstr. 24

D-10117 Berlin

ALEMANIA

Application No:	18 036 904
Your reference:	TM26877EU00/CONNECT-LOGO
Trade mark:
Mark type:	Figurative mark
Applicant:	Merck KGaA Frankfurter Str. 250 D-64293 Darmstadt ALEMANIA

The Office raised an objection on 11/04/2019 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 11/06/2019, which may be summarised as follows:

1. Descriptiveness and distinctive character

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.

1. Descriptiveness and distinctive character

General remarks on Article 7(1)(c) EUTMR

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).

General remarks on Article 7(1)(b) EUTMR

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). 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).

Applicant´s remarks

The sign at issue consists of at least four elements:

1. The verbal element “Connect”;

2. A graphic element consisting of three curved lines in the centre above the word;

3. A graphic element consisting of three partially curved lines to the bottom left of the word element, the middle line of which extends to the bottom right and ends in a dot;

4. A frame with a characteristic shape having with three rounded corners and a missing corner at the bottom right that is defined by a diagonal line.

In assessing the descriptiveness of the sign, the examiner relies exclusively on the descriptiveness of certain elements, namely no. 1) and no. 2) as cited above. The examiner has not given sufficient importance to the other elements, namely no. 3) and no. 4) as cited above.

The graphic element beneath the word element – no. 3) - would not be recognised as an “icon-like representation of a RFID identification” as stated by the examiner and it would not be easily recognisable as such. The figurative elements may be suggestive or allusive but are indeed non-descriptive. The overall impression of the sign applied for, the whole of which is more than the sum of its parts, is not descriptive of the goods and services applied for.

Although the distinctive character of a complex mark may be assessed, in part, by way of a separate examination of its individual word or other elements, it must be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, also present such distinctive character .

As the trade mark is not descriptive of the goods and services in question for the reasons given above, it does not lack the required distinctiveness for that reason. Upon assessing the lack of distinctiveness of the sign, the examiner focused on the afore-mentioned elements no. 1) and no. 2). The further elements - no. 3) and no. 4) as cited/described above – are not negligible. There is no indication [from the results of] in the internet search provided by the Office that these elements are commonly found in connection with the marketing of the goods and services at issue.

The combination of all four elements allows the mark to fulfil its essential function for the goods and services for which protection is sought (the whole is more than the sum of its parts), also taking into account that a minimum degree of distinctiveness is sufficient to preclude the application of art. 7(1)(b) EUTMR.

Office´s comments

The applicant asserts that the examiner relies exclusively on the descriptiveness of certain elements of the sign, such as the word “Connect” and the graphic element above this word, three centre-positioned curved lines. Moreover, the applicant alleges that the examiner has not given sufficient importance to the other elements, namely the three partially curved lines to the bottom left of the verbal element with the middle line ending in a dot and lastly the surrounding frame with a shape of three rounded corners and the fourth corner being angular.

The Office agrees with the applicant that since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

It is on that basis that the Office finds that the sign at issue, seen as a whole,

and in relation to the goods and services which for the sake of good order are:

Class 9 Data storage devices and media, namely radio-frequency identification (RFID) tags, radio-frequency identification (RFID) readers, labels with integrated RFID chips.

Class 42 Platform as a service [PaaS]; Software as a service; Providing on-line non-downloadable software for database management, inventory management, transmission of information, management of information, management of data, transmission of data.

will be perceived as a figurative element representing the goods and services or at least having a direct link with the characteristics of the goods and services, namely a depiction or the symbol of a radio-frequency identification/RFID tag or chips as applied for in class 9 which function or are configured with the necessary RFID software (in the form of PaaS or on-line non-downloadable software) as applied for in class 42 for the implementation of RFID, i.e. management of data and databases. The verbal element ‘Connect’ simply reinforces the crucial thing or the intended purpose to connect to the web or to go online in order to implement RFID and get access to data and databases.

The frame with three round corners and a fourth corner angular would be seen as a typical example of a shape of a RFID tag or chips, see the following excerpts:

https://www.jaincolab.com/rfid-tag

https://www.indiamart.com/proddetail/rfid-chip-2941715012.html

https://www.alamy.es/chip-rfid-image5494829.html?pv=1&stamp=2&imageid=57F360C6-621B-49DB-952F-C8BD15096640&p=1183&n=0&orientation=0&pn=1&searchtype=0&IsFromSearch=1&srch=foo%3dbar%26st%3d0%26pn%3d1%26ps%3d100%26sortby%3d2%26resultview%3dsortbyPopular%26npgs%3d0%26qt%3drfid%2520chip%26qt_raw%3drfid%2520chip%26lic%3d3%26mr%3d0%26pr%3d0%26ot%3d0%26creative%3d%26ag%3d0%26hc%3d0%26pc%3d%26blackwhite%3d%26cutout%3d%26tbar%3d1%26et%3d0x000000000000000000000%26vp%3d0%26loc%3d0%26imgt%3d0%26dtfr%3d%26dtto%3d%26size%3d0xFF%26archive%3d1%26groupid%3d%26pseudoid%3d%26a%3d%26cdid%3d%26cdsrt%3d%26name%3d%26qn%3d%26apalib%3d%26apalic%3d%26lightbox%3d%26gname%3d%26gtype%3d%26xstx%3d0%26simid%3d%26saveQry%3d%26editorial%3d1%26nu%3d%26t%3d%26edoptin%3d%26customgeoip%3d%26cap%3d1%26cbstore%3d1%26vd%3d0%26lb%3d%26fi%3d2%26edrf%3d%26ispremium%3d1%26flip%3d0%26pl%3d

Although the sign at issue may contain some figurative/stylised element that confer upon it a degree of stylisation – such as the graphic element below left to the verbal element with the middle line – out of three curved lines - extending/ending in a dot - the nature of these elements is so minimal that this will not endow the trade mark as a whole with any distinctive character. These elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function for the goods and services for which protection is sought.

Therefore, the Office maintains its’ position that the current sign, seen as a whole, is descriptive and devoid of any distinctive character and not capable of distinguishing the goods and services applied for within the meaning of art. 7(1)(b) and (c) and art. 7(2) EUTMR.

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 18 036 904 is hereby rejected for all the goods and services claimed, namely:

Class 9 Data storage devices and media, namely radio-frequency identification (RFID) tags, radio-frequency identification (RFID) readers, labels with integrated RFID chips.

Class 42 Platform as a service [PaaS]; Software as a service; Providing on-line non-downloadable software for database management, inventory management, transmission of information, management of information, management of data, transmission of data.

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.

Finn PEDERSEN