Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/02/2020

LightingEurope

Axel Baschnagel

Rue Belliard 205

B-1000 Brussels

BÉLGICA

Application No:	018120206
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	LightingEurope Rue Belliard 205 B-1000 Brussels BÉLGICA

The Office raised an objection on 24/09/2019 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 28/11/2019, which may be summarised as follows:

• The trade mark at issue is of distinctive character.

• The sign should be the official information displayed on the packaging of the containing products. The sign should ensure the link between the pictograms and the applicant and to ensure consistent and clear information is provided to the consumer by all economic actors placing lamps on the EU market.

Decision

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 on Article 7(1)(b) EUTMR

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).

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, 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).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C 173/04 P, Standbeutel, EU:C:2006:20, § 31).

On the non-distinctive character of the trade mark

The appearance of the mark for which protection is sought does not depart significantly from the norms and customs of the relevant sector. End users will usually direct their attention more to the label or name of the product than to instructional info-graphs.

In particular, the sign for which protection is sought consists merely of an instructional info-graph that would be seen by the relevant consumer as typical of the forms of instructional info-graphs of the goods and services in question. This instructional info-graph is not markedly different from various basic instructional info-graphs commonly used in trade for goods and services at issue; it is merely a variation thereof.

In Class 16 the sign promotes printed matter in the form of instructional info-graphs. In Class 11 the sign merely explains how to use the lighting. In Class 35 the sign is used to advertise LED lamps.

Outcome

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 18 120 206 is hereby rejected.

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.

Frank MANTEY