Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/05/2020

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	018061714
Your reference:	ALI-T-732431
Trade mark:
Mark type:	Figurative mark
Applicant:	Brother Industries, Ltd. 15-1, Naeshiro-cho, Mizuho-ku Nagoya-shi, Aichi-ken 467-8561 JAPÓN

The Office raised an objection on 07/06/2019 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for all the goods and services applied for.

On 04/09/2019, the applicant submitted its observations which may be summarised as follows:

1. The Office did not define the level of attention of the relevant public. The level of attention of the professional public and average consumers is high in the present case.

2. The Office has failed to assess distinctiveness with respect to each of the goods and services for which protection is sought. The Office has given abstract reasoning without any reference to the objected goods and services.

3. The Office did not sufficiently substantiate the reasons for the alleged lack of distinctive character of the figurative mark. The perception of the relevant public is not supported by evidence and the evidence regarding the use of the mark provided by the Office pertains to abstract excerpts from the Internet on which appear signs including a check mark symbol in various colours.

4. The Office has simplified the mark applied for and ingored the vigorous contrast that exists between the black color of the check mark symbol and the visually striking gradient of colours of the circle around it.

5. A minimal level of distinctiveness is sufficient.

6. The Office has accepted very similar marks.

After reviewing the applicant’s reply of 04/09/2019 to the notice, the Office decided to maintain the objection for all the goods and services objected to and to further clarify the objection with an additional communication of 12/12/2019.

In the communication of 12/12/2019, the Office noted with respect to the level of the relevant public that in the letter of objection, the Office had stated that the relevant public consists of both average consumers and the professional public in the European Union. Insofar as the level of attention is concerned, the Office pointed out that even if the awareness of part of the relevant public is high with respect to some of the goods and services, given the relatively high technical level and cost of the goods and services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

As regards the applicant’s argument that the Office did not have assessed distinctiveness with respect to each of the goods and services for which protection is sought, the Office first of all noted that it is indeed settled case-law that general reasoning can be used for goods or services which have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogenous category of goods and/or services (02/04/2009, T 118/06, Ultimate fighting championship, EU:T:2009:100, § 28.).

Furthermore, the Office had noted in the letter of objection that the mark would be perceived by the relevant public as a non-distinctive and banal representation of a positive indicator/check mark, which can e.g. indicate that the goods and services in question are a good choice or of good quality and/or that something is done well. The Office noted that due to the banal character of the mark, taken as a whole, the mark is entirely devoid of any distinctive character for all these goods and services applied for.

For the sake of clarity, the Office noted in its letter of 12/12/2020 that insofar as the goods in Class 3 are concerned, the mark would be perceived as a positive indicator, indicating that the goods in question, namely Toners; cartridges filled with toner; printing ink; ink (printing-); copying inks; dry inks; ink cartridges are of good quality or a good choice. As regards the goods in Class 9, namely Computer software; printers; copying machines; facsimile machines; multifunction devices for use in printing, copying, scanning, video capturing and/or transmitting documents and images; photosensitive drum units for processing images; electronic label printers; scanners, the mark would be perceived as well as a positive indicator informing that the goods in question are of good quality or a good choice.

As regards the services in Class 35, namely Commercial information and advice for consumers; retail services in relation to ink cartridges, and toner cartridges the mark would be perceived as a positive indicator / check mark, informing the relevant consumers that the services in question are of good quality or a good choice, and/or performed well.

As regards the applicant’s argument that it is up to the Office to provide evidence that the mark is non-distinctive and used in the relevant market sector, the Office noted that in the letter of objection the Office stated that the mark for which protection is sought does not depart significantly from the norms and customs of the relevant sector; it is merely a variation thereof. The fact that the appearance of the mark is not markedly different from various basic symbols/shapes commonly used in trade for the goods and services at issue was supported by the following internet searches:

(information extracted 07/06/2019 from Computerhope at https://www.computerhope.com/issues/ch001830.htm).

(information extracted 07/06/2019 from Stock.Adobe at https://stock.adobe.com/es/images/check-box-icon-check-mark-sign-symbol-iconset-

round-colourful/70788177).

(information extracted 07/06/2019 123rf at https://www.123rf.com/photo_60763574_stock-vector-check-box-vector-icon-buttonisolated-check-vote-icon-mark-sign-choice-yes-symbol-correct-design-che.html?fromid=TVBWeXp4UmF3VzFYdlowVVFzTXZ6dz09).

(information extracted 07/06/2019 at https://depositphotos.com/257199814/stock-illustration-check-mark-in-a-box.html)l.

Moreover, the Office noted that the Office may base its analysis on the distinctiveness of the mark on its practical experience. However, in the present case, the Office had also provided the above examples that support the Office’s view that the mark in question is just a variation of a check mark and is not markedly different from such basic symbols/shapes commonly used.

Furthermore, the Office pointed out that it is on the basis of that 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 Office did not agree with the applicant that the Office had simplified the mark applied for and ignored the vigorous contrast that exists between the black colour of the check mark symbol and the visually striking gradient of colours of the circle around it. First of all, the Office noted that the use of colours is common in advertising and marketing of goods and services and does not endow the mark with distinctiveness in the case at hand. Secondly, the mark does not have any striking feature and consists of a simple banal round element and a black check mark symbol inside of it. Lastly and contrary to the applicant’s argument, the contrast of the black check mark symbol and the colourful circle is not sufficient to endow the mark with distinctiveness.

The Office agreed with the applicant that a minimum level of distinctiveness is sufficient for a mark to be registered as a trade mark. However, and as also noted in the initial letter of objection, although it is acknowledged that even signs with low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because the distinctive character means that the trade mark guarantees the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (15/09/2005, C-37/03, ‘BioID’, ECLI:EU:C:2005:547).

Furthermore, the Office considered that the trade mark registrations referred to (Enclosure 1) could result in a more favourable assessment.

As regards the earlier marks referred to by the applicant, the Office firstly noted that none of the marks referred to is identical to the mark in question.

Secondly, the Office noted that some of the trade marks referred to have been registered relatively long time ago, in particular EUTM no. 4227054, EUTM no. 5365408, EUTM no. 9117409, EUTM no. 9459231, EUTM no. 10076875, EUTM no. 11223542 and EUTM no. 11879541 that were registered between 2008 and 2013. The Office noted that the practice of the Office is constantly developing. Furthermore, the Office stated that 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).

The Office also pointed out that the assessment of distinctive character is not exact science. The Office strives to act consistently, but each case must be considered separately. Even though in some earlier cases the examiner may, in the opinion of the applicant, have applied a less strict approach to marks that in some respects are reminiscent of the one being applied for, the contested decision is, however, in harmony with the most recent decisions of the EU Courts and Boards of Appeal.

If, by accepting in a decision given in a particular case that a sign is eligible for registration as an EU trade mark, the Office has erred in law, that decision cannot be successfully relied on to support an application for the annulment of a later contrary decision adopted in a similar case. It is clear from the case-law of the Court of Justice 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 (08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227, § 59 and the case-law cited).

Lastly, the Office draw the applicant’s attention to the following marks that have been refused pursuant to Article 7(b) EUTMR:

EUTM 016238792 for goods in Classes 9 and for the services in Classes 35, 36 and 42.

EUTM 016380693 for services in Class 35 and 36.

EUTM 017896702 for goods in Classes 3, 9, 12, 14, 16 and 24 and services in Class 35.

The Office gave a time limit of two months from the clarification of 12/12/2019 to send further observations in reply to the Office communication.

On 28/01/2020, the applicant submitted the following further observations:

1. The Office has not sufficiently assessed distinctiveness with respect to each of the goods and services applied for, despite the Office’s further communication of 12/12/2019. Only overall reasoning has been provided for the objected goods and services and it can be concluded that the reasoning is not sufficient to justify the objection of the mark with respect to the goods and services.

2. The examples of use provided are irrelevant. As the applicant had already emphasised at its previous submission, these are entirely irrelevant because they pertain to signs significantly different from the mark applied for and are purely abstract as they consist in mere stock photos.

3. The precedents referred to by the applicant are relevant. The applicant also includes further examples for the sake of demonstration. The examples put forward by the applicant span from 2006 to 2019 clearly indicate that the Office has always considered comparable trade marks to be distinctive enough for the goods and services at issue or for comparable goods and services. While it is true that the Office’s practice evolved throughout the years, this does not mean that the precedents dated before year 2014 would necessarily be devoid of relevance.

4. The Office must take into account the principles of equal treatment and sound administration and strive for consistency.

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.

General remarks

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).

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).

As regards the applicant’s further observations

The Office remains its opinion that the objection of the goods and services applied for has been sufficiently reasoned with respect to the list of goods and services.

As noted in the letter of 12/12/2019, the mark would be perceived as a positive indicator, indicating that the goods in question, namely Toners; cartridges filled with toner; printing ink; ink (printing-); copying inks; dry inks; ink cartridges are of good quality or a good choice. As regards the goods in Class 9, namely Computer software; printers; copying machines; facsimile machines; multifunction devices for use in printing, copying, scanning, video capturing and/or transmitting documents and images; photosensitive drum units for processing images; electronic label printers; scanners, the mark would be perceived as well as a positive indicator informing that the goods in question are of good quality or a good choice.

As regards the services in Class 35, namely Commercial information and advice for consumers; retail services in relation to ink cartridges, and toner cartridges the mark would be perceived as a positive indicator / check mark, informing the relevant consumers that the services in question are of good quality or a good choice, and/or performed well.

Following the above, the Office is still of the opinion that the mark applied for, namely taken as a whole is not distinctive for the above goods and services as the mark does not have any striking feature, as the sign consists of a simple banal round element and a check mark symbol inside of it. It i s also worth pointing out that the use of colours is common in advertising and marketing of goods and services and indeed does not endow the mark with distinctiveness in the case at hand. It can also be added that the colours may refer to a colour palette (of inks).

As regards the applicant’s argument that the examples of the Office in the letter of objection are irrelevant, the Office would firstly like to note that the objection has been raised because the mark, taken as a whole, is a banal representation of a positive indicator / tick mark that would indicate that the goods and services are good choice or of good quality and/or that something is done well. Secondly, the Office notes that in the letter of objection it was additionally stated that the appearance of the tick mark is not markedly different from various basic tick mark symbols used in trade and the Office provided several internet extracts to demonstrate it in practice. However, the Office may base its analysis on the distinctiveness of the mark on its practical experience and the examples were provided for the sake of demonstration.

As regards the applicant’s argument that the earlier registrations referred to in the applicant’s observations are relevant, the Office maintains its opinion that the despite these earlier registrations, the mark applied for is clearly objectionable due to the lack of distinctiveness.

As also noted in the letter of 12/12/2019, none of the marks referred to is identical to the mark in question.

Furthermore, the Office notes that the further examples given in the applicant’s further observations are not comparable to the mark at hand. As noted above, the mark applied for, namely , consists of a banal round element and a simple black tick mark inside of the element. The use of colours is common in advertising and marketing of goods and services and it can also be added that the colours may refer to a colour palette (of inks).

The below mark examples provided by the applicant in the further observations, on the other hand, are more stylised with respect to their tick mark and/or its positioning and/or the background: elements: (EUTM No. 15705081), (EUTM No. 17099102), (EUTM No. 17893686) and (EUTM No. 17932959).

Furthermore, with respect to other earlier registrations referred to by the applicant, the Office maintains its opinion, for the reasons provided in the letter of 12/12/2019. Furthermore, the Office would like to point out that at operational level, the Interactive Collaborative Examination (ICE) was introduced in January 2017, increasing consistency.

Accordingly, if in previous cases the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case. The present decision is consistent with the Office’s practice on absolute grounds and in conformity with the case law of the Courts. Fundamentally, within the scope of European harmonised trade mark law and even more so within the Office’s examination practice, attempts should be made to ensure that the same results are reached in comparable cases (12/02/2009, C-39/08, ‘Volkshandy’, EU:C:2009:91). Neither identical registrations nor registrations by the EUIPO in respect of similar trademarks constitute grounds for nevertheless allowing applications that are devoid of distinctive character (13/02/2008, C-212/07, ‘Hairtransfer’, § 44, EU:C:2008:83).

The mere fact that, in other cases relating to other marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality (02/05/2012, T435/11, ‘UniversalPHOLED’, EU:T:2012:210).

Furthermore, it is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality. Insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else.

Moreover, for reasons of legal certainly and, indeed, of sound administration, the assessment of any application for registration must be stringent and complete in order to prevent trade marks being improperly registered. That assessment should be carried out on a case-by case basis. Indeed, registration of a sign as a trade mark depends on the specific criteria applicable in the factual circumstances of the instant case to ascertain whether the sign in question is caught by a reason for refusal (10/03/2011, C-51/10 P, 1 000, EU:C:2011:139, § 73 to 77; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR the application for European Union trade mark No 18 061 714 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.

Paivi LEINO