Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 17/02/2020

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	018061715
Your reference:	ALI-T-732430
Trade mark:	MYSUPPLIES
Mark type:	Word mark
Applicant:	Brother Industries, Ltd. 15-1, Naeshiro-cho, Mizuho-ku Nagoya-shi, Aichi-ken 467-8561 JAPÓN

The Office raised an objection on 04/06/2019 and 30/10/2019 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.

The applicant submitted its observations on 17/12/2019, which may be summarised as follows:

1. The Office provided an overall reasoning for objecting to all the designated goods and services, without identifying any homogeneity between them.

2. While the Office is not bound by its own previous decisions, it is required to be consistent. In this context, due weight should be given to comparable prior decisions including with regard to the registration of comparable trade marks.

3. The mark applied for is sufficiently distinctive.

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 waive the objection for the following services:

Class 35 Commercial information and advice for consumers.

The objection is maintained for the remaining goods and services.

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).

The Office replies to the applicant’s observations as follows.

1. In the notice of grounds for refusal dated 30/10/2019, a direct link between the objected goods and services was provided.

Therefore, toners; cartridges filled with toner; printing ink; ink (printing-); copying inks; dry inks; ink cartridges are used in 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; scanners.

For example, printers work by converting digital images and text into physical copies by using a driver or specialised software that has been designed to convert the file into a language that the printer can understand. Moreover, an ink cartridge or inkjet cartridge is a component of an inkjet printer that contains the ink that is deposited onto paper during printing.

Therefore, the goods for which protection is sought in Class 2 and computer software in Class 9 are considered to be essential supplies for the functioning of printers; copying machines etc.

Regarding Class 35, the services for which protection is sought are directly related to retail services for the objected goods.

It is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is a group of goods and/or services that have a sufficiently direct and specific link to each other (02/04/2009, T-118/06, Ultimate fighting championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is/are given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38).

2. The Office acknowledges that it must strive for consistency and apply the same criteria to the examination of trade marks.

However, the Office cannot be bound by previous decisions (27/03/2014, T‑554/12, AAVA MOBILE / JAVA, EU:T:2014:158, § 65). The examination of absolute grounds for refusal must be stringent and full (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59) and may not consist of just the mere repetition of comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality requires that, in all instances, the necessary decision be made if the legal requirements for it have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

This applies even if the sign for which registration is sought is composed in an identical/highly similar manner to that of a mark for which the Office has already approved registration as an EUTM and which relates to goods or services identical or similar to those for which protection is sought (07/10/2015, T‑244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56).

Consequently, a person who seeks registration of a sign as a trade mark cannot rely, to their own benefit, on any unlawful act committed to the benefit of someone else in order to secure an identical decision.

3. The Office maintains its opinion that the sign for which protection is sought is non-distinctive.

The question that must be asked, when applying Article 7(1)(b), is how the sign will be perceived by typical consumers of the goods and services at issue. The distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301; 09/07/2008, T-58/07, Substance for success, EU:T:2008:269; and consistent case-law on absolute grounds for refusal).

The Office considers that the message communicated by the expression ‘MYSUPPLIES’ is plain, does not constitute a play on words, and contains no imaginative, surprising or unexpected element capable of rendering it distinctive in the minds of the relevant public. On seeing the mark applied for, in relation to the goods and services for which protection is sought, the relevant consumer will perceive it merely as a promotional laudatory message, the function of which is to communicate a value statement.

Therefore, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services in question, namely that they are tailor-made supplies, designed and adapted to suit personal needs.

The applicant further argued that, in decisions mentioned by the Office (05/08/2018, R 2018/2014‑1, MYTIRE (FIG. MARK); 23/01/2015, R 1799/2015‑4, MYDOOR), there is no explicit confirmation of the Office’s assertion that ‘[w]hen the word ‘my’ is used in trade, it informs consumers that the goods are bespoke or tailor-made to suit each client’s individual needs’ — especially not at paragraph 16 of the Fourth Board of Appeal’s ‘MYDOOR’ decision (23/01/2015, R 1799/2015‑4, MYDOOR). Furthermore, the applicant considered that these decisions do not have any relevance for the case in question since they were both taken four years ago and do not reflect the Office’s current practice.

The Office acknowledges that it made an error regarding the indication of the paragraph in the decision (23/01/2015, R1799/2015-4, MYDOOR). The correct paragraph is § 14.

Nevertheless, the possessive pronoun ‘my’ is intended to address the consumer directly and conveys the message that the consumer will find an offer that is especially relevant to them (23/01/2015, R1799/2015-4, MYDOOR, § 14).

Furthermore, the applicant’s argument regarding the relevance of these previous decisions, is irrelevant. This practice has also been confirmed in the decision of the First Board of Appeal of 06/06/2017 (06/06/2017, R 1507/2016‑1, my CHIPSBOX (fig.), § 17).

It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark applied for as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark applied for 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 applied for 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).

Therefore, the Office concludes that the mark applied for, MYSUPPLIES, does not have the capacity to act as a trade mark for the relevant goods and services unless the consumer has first been taught to appreciate it as a trade mark, through the use made of it.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 061 715 is hereby rejected for the following goods and services:

Class 2 Toners; cartridges filled with toner; printing ink; ink (printing-); copying inks; dry inks; ink cartridges.

Class 9 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.

Class 35 Retail services in relation to ink cartridges, and toner cartridges.

The application may proceed for the remaining services, namely:

Class 35 Commercial information and advice for consumers.

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.

Marina TOMIĆ