Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 29/05/2020

SQUIRE PATTON BOGGS (US) LLP

Neue Mainzer Strasse 66-68

60311 Frankfurt am Main

ALEMANIA

Application No:	018105104
Your reference:	RLAN_G_23006
Trade mark:	N-SERIES
Mark type:	Word mark
Applicant:	null

The Office raised objections on 15/10/2018 and on 18/02/2020 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 letters.

After the 2^nd objection on 18/02/2020 the applicant submitted its observations on 16/03/2020, which may be summarised as follows:

1. In the automobile field it is common to combine a single letter with the term ‘SERIES’. However, this is not sufficient to deny the distinctiveness of the mark applied for.

2. In her 2^nd objection on 18/02/2020, the examiner emphasised that she did not object to the mark on the basis that it was descriptive or a generic term, but that it was common practice in the automobile field to combine a single letter with the term ‘SERIES’. The examiner relied on Internet extracts which generally show the manufacturer’s name such as ‘Honda’ or ‘Hyundai’ in close proximity with the mark.

3. Contrary to the examiner’s view, the applicant considers that the mark ‘N-SERIES’ is not devoid of any distinctive character.

4. Further, the applicant states that The German Federal Patent Court ruled that the mark ‘X-SERIES’ was sufficiently distinctive for motor vehicles in Class 12. The applicant is aware that the Office is not bound by decisions of national marks; however, this assessment of distinctiveness has to be taken into account.

5. The applicant explains that examples used in the examiner’s objections such as ‘e-SERIES’ (for electric cars) and ‘M-SERIES’ (‘M’ stands for motorsport) are descriptive; however, the letter ‘N’ has no descriptive meaning in relation to vehicles. Furthermore, it notes that the example ‘N-Series Lightduty Trucks – The World Class Trucks for Effective Work’ must be disregarded since it is not addressed to the English-speaking public.

6. Finally, the above explains why the mark ‘N-SERIES’ was registered by the German Patent and Trade Mark Office.

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.

Relevant public

The goods at issue in the present case (Class 12) are directed at the public at large and at the professional consumer in the automobile field with professional knowledge who purchases the goods for professional/business purposes. 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).

Since the trade mark consists of English words, the relevant public in relation to whom the absolute grounds for refusal has to be assessed consists of English-speaking consumers in the European Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

Article 7(1)(b) EUTMR

For a trade mark to possess distinctive character for the purposes of Article 7(1) (b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (29/4/2004, C-456/01 P & C-457/01, P, Tabs, EU:C:2004:258, § 34 and the cited case-law).

The distinctiveness of a trade mark must be assessed both by reference to the goods in the application and to the perception of them by the relevant public (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 34-35).

The sign is non-distinctive for vehicles on the basis that it is common practice in the car trade to combine single letters with the term ‘series’. As such, ‘N-Series’ would not be perceived as a badge of commercial origin without an additional element.

With regard to the applicant’s arguments that the sign is distinctive, because the specific product line is from a certain manufacturer and thus is an indication of commercial origin, it must be noted that the mark in the examples provided is generally shown in close proximity with the name of the manufacturer such as ‘Honda’ or ‘Hyundai’ and thus ‘N-SERIES’ on its own is not a badge of origin.

With respect to the applicant’s argument that some of the internet extracts provided by the applicant do not address an English-speaking public, the following extracts show that a letter is commonly used in connection with the word ‘series’ in the automobile industry. Signs that are commonly used in connection with the marketing of the goods concerned are devoid of distinctive character:

• https://www.jardinemotors.co.uk/bmw/new/m-series/

• Low-emission vehicles eligible for a plug-in grant - GOV.UK

• www.gov.uk › ... › Parking, public transport and the environment

• Check which electric (plug-in) and hybrid cars, vans and motorbikes are available for a ... The amount of the grant depends on which category the vehicle is in. ... T; NIU M-Series; NIU M+; NIU N-Cargo; NIU N-Series; NIU NGT; NIU U-Series ...

• https://www.experian.co.uk/motor/

• The MG Midget and Austin Healey Sprite High Performance Manual

• books.google.es › books

• Daniel Stapleton - 2008 - ‎Transportation

• ... in the UK are also companies which can offer sound advice for your particular engine ... There is a myriad of choice, so I will limit recommendations for road cars to ... less development than the A series, but was fitted in fewer models of car.

• Classic Cars for Sale | Car And Classic UK

• www.carandclassic.co.uk

• Find your dream classic car from over 10000 private adverts plus many more trade ... The Classic Car Company is delighted to present this incredible BMW, on behalf of a client. ... 1960 Land Rover Series II 2 - Recent restoration For Sale.

Regarding the applicant’s argument that the mark does not appear in any dictionary it is pointed out that , ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question’ … (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

In response to the applicant’s argument that the examiner did not assess each of the goods applied for:

according to established case-law the examination of the grounds for refusal laid down in Article 7 CTMR has to be carried out in relation to each of the goods and services for which trade mark registration is sought, as the applicant has correctly pointed out. A decision refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods and services. Nonetheless, the Court has confirmed that where the same ground of refusal is given to a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (15/02/2007, C‑239/05, The Kitchen Company, EU:C:2007:99, § 38). This is clearly applicable to the case at hand. The goods covered by the application have common characteristics in that they are all vehicles and adopt similar marketing practices. The Office concludes therefore, that the relevant consumer’s perception of the mark would be the same in respect of all the goods and considers it justified to provide an overall statement of reasons. Contrary to what the applicant suggests, the Office considers that even if it were to state reasons in respect of each of the goods covered by the application that would not change the outcome reached by the Office for the reasons stated above.

As regards that the example ‘N-Series Lightduty Trucks – The World Class Trucks for Effective Work’ must be disregarded since it is not addressed to the English-speaking public. It is to be noted that vehicles will be sold in many countries and the English-speaking consumer is likely to come into contact with the aforementioned sign ‘N-Series’.

The relevant consumers will see the sign at issue not as a fanciful trade term or a trade mark denoting a particular source of the goods concerned. The examples provided, regardless of whether the letter is descriptive or not, show that the word ‘series’ in combination with a letter is commonplace in the automobile trade and could be used by many undertakings. Without any further element, such as the manufacturer’s name, the word ‘series’ combined with a letter, will not be capable of identifying the origin of the goods. Thus, in the absence of any acquired distinctiveness, the mark is not distinctive.

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

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 18 105 104 is hereby rejected in part, namely for:

Class 12 Cars; Quads; Vehicles; Electric vehicles; Cycle cars; Motorcycles; Mopeds; Non-motorized scooters (vehicle); Electrically operated scooters; Motor scooters; Electric bicycles; Bicycles; Motor tricycle; Electric tricycle.

The application may proceed for the following goods and services:

Class 9 Computer programs, recorded; Integrated circuit cards; Flashing safety lights; Navigational instruments; Vehicle radios; Global positioning system (GPS) apparatus; Speed measuring instruments; Bicycle speedometers; Mileage recorders for vehicles; Steering apparatus, automatic, for vehicles; Chips [integrated circuits]; Remote control apparatus; Bicycle helmets; Goggles; Theft prevention installations, electric; Batteries, electric, for vehicles; Accumulator jars; Battery boxes; Chargers for electric batteries.

Class 12 Direction indicators for scooters; Scooter stands; Scooter chains; Scooter handlebars; Scooter brakes; Scooter wheel rims; Scooter cranks; Spokes for scooter wheels; Scooter wheels; Protective covers for scooters; Scooter frames; Fitted vehicle covers; Scooter bells; Baskets adapted for scooters; Pumps for scooter tyres; Scooter parts and replacement parts.

Class 38 Communications by telephone; Electronic communications; Communication by computer; Communication by electronic means; Providing access to databases; Transmission of data via satellite and cloud; Transmission of electronic mail; Message sending; Transmission of information; Providing access to information on the Internet; Transmission of information signals; interactive communication services; communication services for the remote control of electronic devices; communication services for the delivery of emergency messages and calls; electronic transmission of data and documents via computer terminals and electronic devices; signal transmission for electronic commerce via telecommunications systems and data communication systems; providing access to electronic communications networks and electronic databases; provision of communication facilities for the interchange of digital data; communication of data by means of telecommunications; transmission of data, including by audio-visual apparatus; transmission of sound, picture, video and data signals; data bank interconnection services; electronic data exchange services; transmitting information resulting from traffic surveillance; provision of access to online address book, calendar and diary services; telecommunications services provided for the emergency services; sending of emergency messages by electronic means.

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.

Zuzana KAUFMANNOVA