Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/10/2019

TR INTELLECTUAL PROPERTY LTD

Ground Floor, Adamson House, Towers Business Park

Wilmslow Road

Didsbury, Manchester M20 2YY

REINO UNIDO

Application No:	018060407
Your reference:	MCR/EUTM00117
Trade mark:
Mark type:	Three-dimensional
Applicant:	ADVANCED ACCESSORIES LIMITED Unit 11, Westbrook Park Trading Estate, Trafford Park Road, Trafford Park, Manchester M17 1AY REINO UNIDO

The Office raised an objection on 18/06/2019 pursuant to Article 7(1)(b) 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.

The applicant submitted its observations on 11/07/2019, which may be summarised as follows.

It is highly unusual for the goods in question to be packaged in a can and thus this renders the packaging distinctive and the purchasing public is likely to associate it with the applicant.

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.

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).

As regards the applicant’s arguments

The application consists of the three-dimensional mark .

The sign for which protection is sought consists merely of a combination of presentational features – a circular cylinder which is narrowed at the top and at the bottom, with a rim and an opening mechanism that would be seen by the relevant consumer as typical of the type of packaging for the goods in question. This shape is not markedly different from various basic shapes commonly used in trade for those goods; it is merely a variation thereof.

It is settled case-law that ‘[a] sign’s distinctiveness 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’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

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 (3D), 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).

Regarding the applicant’s argument that it is highly unusual for the goods in question to be packaged in a can and thus this renders the packaging distinctive and the purchasing public is likely therefore to associate it with the applicant, it suffices to state that to be distinctive a three-dimensional mark must be different from the norm.

[A]s regards three-dimensional marks, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]. By contrast, a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character.

(24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 31).

Moreover, by arguing that a can as packaging for products is distinctive is not enough to prove that the three-dimensional mark is distinctive. The Office disagrees with the applicant because cans, either transparent or non-transparent, are often used for packaging purposes. Therefore, for the distinctiveness of the mark, the shape of the can has a decisive role.

It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

The applicant has neither supported its claim with an explanation of how much, if at all, the shape of the three-dimensional mark is different from the norm nor explained how the shape of the can in question might be perceived by the relevant public as an indication of origin.

Furthermore, the applicant failed to submit any evidence that would prove that it is highly unusual for the goods in question to be packaged in a can.

In view of the foregoing, the Office finds that the shape mark applied for consists of a combination of elements that are typical of the goods in question. The shape in question is not markedly different from various basic shapes for the goods in question commonly used in trade, but is simply a variation thereof. Since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes commonly used for the applicant’s goods and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

Accordingly, the mark applied for does not enable the average consumer, who is reasonably well-informed and reasonably observant and circumspect, to identify the goods in question and distinguish them from those of another commercial origin. Therefore, it is devoid of distinctive character for those goods.

Taking into account the abovementioned, the Office respectfully sets aside the arguments of the applicant.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 18 060 407 is hereby rejected for the following goods.

Class 6 Cans of metal; tins of metal; metal cans used for packaging; packaging containers of metal; containers and packaging articles of metal; all the aforesaid for use in the packaging of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, calculating machines, data processing equipment, smart cards, telephone cards, encrypted smart cards, encoded smart cards, encrypted telephone cards, encoded telephone cards, encrypted cards, encoded cards, magnetic identity cards, camera film, anti-dazzle shades, glasses and anti-glare visors, non-prescription sunglasses, cases, chains, cords and frames therefor, cases for photographic apparatus and instruments, containers for contact lenses, optical goods, holograms, video recorders, sound recording and sound reproducing apparatus and instruments, apparatus and instruments for the reproduction of sound and/or images, parts and fittings for the aforesaid goods, tape recorders, magnetic tapes for recording and reproducing sound or vision, videos and video tapes, radios, remote control apparatus, computer software, programs, tapes, and discs and parts and fittings therefor, computer peripherals, mousemats, wrist pads, computer mouses, keyboard and screen covers, mobile telephones, telephone answering apparatus, pre-recorded games on CD, software, video and any other recording media, time recording apparatus, magnets, mobile telephone covers, mobile telephone accessories, telephone chargers, mobile telephone chargers, battery chargers for mobile phones, electrical communication apparatus and instruments, interactive educational games, video games, screen savers, mouse mats, wrist pads, keyboard and screen covers, covers and replaceable housings for telephones and mobile telephones, transformers, power invertors, power banks, ultrasonic cleaners, LED bulbs, bulbs, cables, microphones, plugs, adaptors, record to MP3 converters, reflective armbands, AC/DC attachment pins, extension leads, cooler leads, electronic time switches, plug in timers, countdown timers, dopplers, radio alarm clocks, parts, fittings and accessories for all the aforesaid goods and loyalty cards.

The application may proceed for the following goods.

Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; calculating machines; data processing equipment, smart cards; telephone cards; encrypted smart cards; encoded smart cards; encrypted telephone cards; encoded telephone cards; encrypted cards; encoded cards; magnetic identity cards; cameras and parts and fittings therefor; camera film; anti-dazzle shades; glasses and anti-glare visors; non-prescription sunglasses; cases; chains; cords and frames therefor; cases for photographic apparatus and instruments; containers for contact lenses; optical goods; holograms; televisions; video recorders; sound recording and sound reproducing apparatus and instruments; apparatus and instruments for the reproduction of sound and/or images; parts and fittings for the aforesaid goods; tape recorders; magnetic tapes for recording and reproducing sound or vision; videos and video tapes; radios; record and CD players; remote control apparatus; computer hardware and computer software, programs, tapes, and discs and parts and fittings therefor; computer peripherals; mousemats; wrist pads; computer mouses; keyboard and screen covers; customised floppy discs and CD-ROMS; telephones; mobile telephones; telephone answering apparatus, telephone recorders and telephones incorporating facsimile machines; pre-recorded games on CD, software, video and any other recording media; time recording apparatus; magnets; mobile telephone covers; mobile telephone accessories; telephone chargers; mobile telephone chargers; battery chargers for mobile phones; protective clothing; electrical communication apparatus and instruments; online games over the internet and mobile telephone networks; interactive educational games; video games; screen savers, picture messages, and logos for electrical and electronic devices such as telephones; mobile phone ring tones; downloadable messages; mouse mats; covers and replaceable housings for telephones and mobile telephones; transformers; power invertors; power banks; ultrasonic cleaners; LED bulbs; bulbs; DVD wall brackets; wall brackets for televisions and other electrical equipment; cables; microphones; plugs; adaptors; record to MP3 converters; reflective armbands; AC/DC attachment pins; extension leads; cooler leads; electronic time switches; plug in timers; countdown timers; dopplers; radio alarm clocks; parts, fittings and accessories for all the aforesaid goods; electronic instruction manuals; electronic newsletters; loyalty cards.

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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