Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/11/2019

MARKS & CLERK FRANCE

Immeuble "Visium"

22, avenue Aristide Briand

F-94117 Arcueil Cedex

FRANCIA

Application No:	018061113
Your reference:	119793EM
Trade mark:	TopSat
Mark type:	Word mark
Applicant:	THALES SIX GTS FRANCE SAS 4, avenue des Louvresses F-92 230 Gennevilliers FRANCIA

The Office raised an objection on 30.05.2019 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.

Following a time extension of two months the applicant submitted its observations on 30.09.2019, which may be summarised as follows:

• Concerning the apprehension of “TopSat” as two elements and not as a sole coined word, the applicant states, although “Sat” is written with a capital “S”, the parts “Top” and “Sat” are not separated by a space and are not destined to be understood separately. The mark is a sole invented word. The presence of lower and capital letters should not impact the apprehension of this term as a sole denomination. It is an original coined word. It is not a word which is found in dictionaries.

• Even if the public would see the sign as the combination of “Top” and “Sat”, the Office does a wrong interpretation concerning the meaning of the sign based on their alleged distinct meanings. The first meaning of “Top” is to refer to the highest point or part of something/highest thing in a series of things as a noun or adjective. Associated with “Sat”, it has no meaning. “Sat” is not the official acronym of “satellite”, it is the abbreviation of “Saturday”. An acronym, to be seen as an acronym, must be ended with a dot. “Sat” as an acronym has other official meanings. Therefore the relevant consumer will not immediately recognize “Sat” as connoting “satellite”.

• It is not common in spoken English to combine the words “Top” and “Satellite” in this structure. It would be more natural to combine those words in a different order by saying, for example, “the top satellite” or “the best satellite”.

• The goods and services covered by the application are not satellites. The fact that the goods and services designated by the application are components and parts of satellite / services provided in respect of components and apparatus is not sufficient to make a link with “Sat” since they are not satellites but distinguishable goods. The link is distant between “Sat” and goods that do not have the shape of satellite. The services are even more distant. It is impossible for the mark applied for to be taken to be non-distinctive in the context of the services.

• The mark applied for, at the most, is suggestive. It is arbitrary. It requires imagination, thought or perception to reach a conclusion regarding the nature of the goods and services concerned.

• “TopSat”, taken as a whole, is a coined expression that does not 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/services or other characteristics of the designated goods and services. Then, there is no doubt that the coined word “TopSat” makes reference to a specific and identified origin and, consequently, does fulfil its function of indication and guarantee of commercial origin.

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). 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).

This is clearly not the case with the sign at issue.

The sign in question is composed of the words “Top” and “Sat”, “TopSat”. As the applicant correctly states, the word “TopSat” does not appear in dictionaries. However, it should be noted that it is common in English to create words or expressions by coupling together two words each of which has a meaning. In the case at hand “Top” has the dictionary definition “excellent” (information extracted from the online Collins English dictionary) and “Sat” is a common abbreviation for “satellite”. Therefore, the relevant English-speaking consumer would understand the sign as having the meaning “excellent satellite”. Moreover, coupling the words together without spacing or a hyphen complies with English lexical rules and rules on syntax. The absence of a hyphen or a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s goods and services from those of other undertakings (13/11/2008, T-346/07, Easycover, EU:T:2008:496, § 52 and case-law cited therein). Furthermore, the sign applied for does not comprise anything fanciful, arbitrary or imaginative to impress itself on the consciousness of the consumers as a badge of origin, but is purely laudatory.

It should also be noted that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin. (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

When the relevant consumer is confronted with the sign “TopSat” in relation to “satellite communication apparatus, component parts for satellite communication terminals, namely, satellite antennas, position sensors, motion axis control apparatus and instruments, motion sensors, inertial navigational instruments, satellite beacon receivers, electronic control systems for satellite antennas; installation, maintenance and reparation of satellite communication apparatus, component parts for satellite communication terminals, namely, satellite antennas, position sensors, motion axis control apparatus and instruments, motion sensors, inertial navigational instruments, satellite beacon receivers, electronic control systems for satellite antennas; training in the fields of installation, commissioning, usage and maintenance of satellites communication apparatus and components of satellite communication terminals” they will not see the sign as an indication of origin, but rather as promotional laudatory expression, the function of which is highlight the positive aspects of the goods and services in question, namely, the satellite communication apparatus and component parts therefor and the auxiliary installation, maintenance, repair and training services relating to these goods are excellent.

The Office does not consider that the combination “TopSat” is more than the sum of its parts. The expression merely links two non-distinctive terms in such a way that their combination assessed globally lacks any fanciful feature or distinctive character, but instead conveys a promotional laudatory statement in relation to the communication apparatus involving the use of an active or passive satellite and their component parts and the auxiliary services related thereto for which protection is being sought.

The Office states that a trade mark consisting of an expression which merely conveys a promotional laudatory statement is unlikely to serve as a badge of trade origin. Such a mark leaves no imprint on the consumer’s consciousness after the purchase has taken place and the expression soon sinks back into the anonymity of ordinary promotional language. The mark will not stand out as an indicator of origin among other equally facile promotional statements, unless through exposure and use, the public has been educated to perceive it as indicator of origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018061113 is hereby rejected for all the goods and services 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.

Helen BIRCH