Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/03/2020

CABINET CHAILLOT

BP 74

F-92703 Colombes Cedex

FRANCIA

Application No:	18 052 802
Your reference:	M27607EM
Trade mark:
Mark type:	Figurative mark
Applicant:	SHENZHEN Hitevision Technology Co., Ltd. No. 8, Qinglan 1st Road, Pingshan, Shenzhen Guangdong 518118 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 10/06/2019 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.

Upon request of 18/07/2019 by the applicant, the Office extended on 22/07/2019 the time limit for submitting observations with two months till 10/10/2019.

The applicant submitted its observations on 09/10/2019, which may be summarised

as follows:

1. Descriptiveness/distinctive character

2. Similar mark registered by the Office

3. Claim of acquired distinctiveness through use

On 23/10/2019 the Office requested the applicant to clarify its’ claim of acquired distinctiveness through use within the meaning of art. 7(3) EUTMR. On 27/11/2019 the applicant confirmed that it’s claim of acquired distinctiveness is supposed to be a principal claim.

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/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 services 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, when used as a trademark, i.e. for marking a product, is understood by the consumer as being an indication of origin of the goods. The goods are not disclosed as being the new line of products. The applicant has no intention to have a monopoly on the expression “new line” being used in a sentence to disclose new products.

Office´s comments

The distinctive character and descriptiveness 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

those goods or services (27/11/2003, T-348/02, ‘Quick’, §29).

Therefore, the figurative mark

is to be assessed in relation to the goods at issue which for the sake of good order are:

Class 9 Audiovisual teaching apparatus; fluorescent screens; projection screens; epidiascopes; optical lenses; optical apparatus and instruments; projection apparatus; teaching apparatus; television apparatus; monitors [computer hardware]; video screens.

Thus, in line with the Office’s notice of objection of 10/06/2019, the Office is still of the position that the relevant consumers would perceive the compound of words, ‘new line’, as providing information that the goods at issue in class 9 are a new range of goods or newly launched on the market, thus describing the kind and quality of the goods at issue. Whether the sign is written in one word, ‘newline’, or in two words, ‘new line’, does not make any difference in the perception of the descriptiveness of the sign.

Therefore, the Office is of the position that the current sign is descriptive and devoid of any distinctive character and is not capable of distinguishing the goods to which an objection has been raised with the meaning of art. 7(1)(b) and (c) and art. 7(2) EUTMR.

2. Similar mark registered by the Office

Applicant´s remarks

The applicant has already registered the following similar EU trade mark:

EUTM no 13 518 832 -

Office´s comments

As regards the applicant´s argument that a similar registration

has been accepted by the Office , 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).

In addition it is clear that the market, the perception of the consumers and,

moreover, the practice of the Office could have changed during that

period. The Court of Justice is also aware of this market and practice

evolution and have stated that observance of the principle of 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).

3. Claim of acquired distinctiveness through use

In addition to the abovementioned arguments, contained in the reply to the

Office’s objection letter of 09/10/2019, you included a claim that the sign

applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. Subsequently, on 23/12/2019 you confirmed that the claim of acquired distinctiveness through use is a principal claim.

In your claim, you indicate that the trade mark applied for has acquired

distinctiveness through use in relation to the goods objected to by the Office which for the sake of good order are as follows:

Class 9 Audiovisual teaching apparatus; fluorescent screens; projection screens; epidiascopes; optical lenses; optical apparatus and instruments; projection apparatus; teaching apparatus; television apparatus; monitors [computer hardware]; video screens.

In support of your claim, you submitted evidence of use on 09/10/2019,

respectively on 23/12/2019.

The evidence to be taken into account is the following:

Annex 1

o Brochures of the products

Annex 2

o Press articles and presentations

Annex 3

o Sales in Europe

Annex 4

o Exhibitions

• Annex 5

• Presentation of clients

• Annex 6

• Presentation of the market

General considerations

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. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1) (b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and longstanding use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (10/11/2004, T-396/02, Karamelbonbon,EU:T:2004:329, § 55-59; 04/05/1999, C-108/97 & C-109/97, Chiemsee,EU:C:1999:230, § 52; 22/06/2006, C-25/05 P, Bonbonverpackung,EU:C:2006:422, § 75; and 18/06/2002, C-299/99, Remington, EU:C:2002:377, § 63)

Preliminary remarks and assessment of the evidence

Acquired distinctiveness must be established throughout the territory in whichthe trade mark did not, ab initio, have distinctive character (22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 83, 86; 29/09/2010, T-378/07, Répresentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 30).

In the present case, since the figurative mark at issue contains English words, the applicant has to prove that the sign has acquired distinctiveness through use in Member States of the European Union where English is an official language, namely Ireland, Malta and the United Kingdom¹.

The burden of proof lies with the applicant, which claims that the sign applied for has acquired distinctiveness. Furthermore, the relevant time period is prior to the filing date of the EUTM application, namely before 30/04/2019.

The applicant must submit evidence that enables the Office to find that atleast a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (15/12/2015, T-262/04, Briquet á Pierre, EU:T:2005:463, § 61 and the case-law cited therein). The evidence must relate to the goods claimed in the EUTM application and must be clear and convincing.

The Office has scrutinized the evidence and material submitted by the

applicant.

Regarding Annex 2, it consists of eight examples of press articles and presentations. In the first one, it is mentioned that ‘Newline’ is a US-based brand with headquarters in Texas owned by Hitevision, a manufacturer of interactive devices located in China. All the presentations/press articles date from 2018 and 2019 (except one from 2016) which is a relatively short period in length prior to the filing of the sign at issue, i.e. 16/04/2019.

Annex 3 shows the sale of Newline products in Europe in the period from 2016-2018. This table reflects some considerable sales figures in some countries of the European Union. However, only the United Kingdom – out of Malta, Ireland and the UK as the primary relevant countries for which to prove evidence of use – is reflected in the sales figures.

Annex 4 shows the representation of Newline goods at different exhibitions in Europe which include Bucharest in Romania, Netherlands, and Poznan in Poland (apart from India and Japan which are countries outside the European Union and therefore, irrelevant in this context). However, none of the relevant EU countries to show evidence of use - Malta, Ireland and the UK - is represented.

Annex 5 presents clients based in Finland, Poland and Spain which have bought Newline products and equipment. Again, these clients represent none of the relevant EU countries - Malta, Ireland and the UK.

Annex 6 consists of an array of market analyses/market reports by FutureSource Consulting. The first report is entitled ‘Quarter 3 2019 – World Interactive Displays’ of 11/11/2019 – concerns a period after the filing of the sign at issue the reason the reason for which it is out of the relevant time scope and therefore not relevant. The remainders are various general market updates: Regional, China, Technology, etc., where no specific mention of ‘Newline’ is included. Only the last market report in line with price comparison features Newline and its’ products in competition with Samsung, Sharp and Smart, see following excerpt:

Therefore, based on the above-cited evidence and information filed by the applicant, the Office finds it impossible to establish that the mark has acquired distinctiveness in the relevant EU member states, namely Ireland, Malta apart from the non-EU Member State United Kingdom² within the meaning of Article 7(3) EUTMR.

The applicant has in general failed to submit ‘secondary evidence’ such as opinion polls/surveys, market share information, advertisements and investment in advertising, etc., as well as direct proof of acquisition of distinctive character (independent consumer and marketing surveys, evidence on the market shares held by the mark, statements from chambers of commerce and industry or other trade and professional associations, etc.). As a whole, the evidence filed – and considering the descriptiveness of the mark/lack of distinctive character - clearly fails to ascertain that the relevant section of the public in the entire relevant English-speaking territory identifies the specific goods applied for as originating from the applicant because of the sign for which registration is sought.

Conclusion

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

18 052 802 is hereby rejected for all the goods claimed, namely:

Class 9 Audiovisual teaching apparatus; fluorescent screens; projection screens; epidiascopes; optical lenses; optical apparatus and instruments; projection apparatus; teaching apparatus; television apparatus; monitors [computer hardware]; video screens.

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.

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