Revocation of a decision (Article 103 EUTMR)

Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/09/2020

N-Cubator B.V.

Markt 19

NL-6071JD Swalmen

PAÍSES BAJOS

Application No:	018164004
Your reference:
Trade mark:	LOBO
Mark type:	Word mark
Applicant:	N-Cubator B.V. Markt 19 NL-6071JD Swalmen PAÍSES BAJOS

On 14/06/2020, the Office informed the applicant of its intention to revoke its decision of 30/03/2020, partially rejecting the present trade application pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR.

The reason for the revocation was that the proceedings leading to the mentioned decision of 30/03/2020 contained an obvious procedural error attributable to the Office, namely that it overlooked a valid request of principal claim for acquired distinctiveness from the applicant in the application.

In accordance with Article 103 EUTMR, the applicant was invited to submit observations on or before 14/07/2020. The Office did not receive any observations within the specified time limit.

The decision referred to is therefore revoked and the following decision is taken:

The Office raised an objection on 20/12/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 30/01/2020, which may be summarised as follows.

1. The applicant claimed that the sign is not descriptive and has a minimum degree of distinctiveness. The sign does not directly and concretely refer to the characteristics of the goods and services applied for.

2. The applicant disagrees with the Office that ‘LOBO’ is an ordinary word in English for referring to the animal ‘WOLF’ and, moreover, it is not used for goods and services related to such animal. Even though the word ‘LOBO’ can refer to the grey or timber wolf of the Western United States, it is not the common word to describe wolf in English. The applicant claimed that ‘it is hard to tell there will be a TV show or book providing information about LOBO as wolf.’ The Office did not apply its multi-factor analysis of subject matter from the Guidelines to this case correctly.

In addition to the abovementioned arguments, in the application for the registration of the EUTM, the applicant included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. The applicant also indicated that this claim was meant as a primary claim.

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 goods and services:

Class 9 Motion picture films about video recordings featuring music and artistic performances, fashion, sports and culture.

Class 35 Retail store services in relation to clothing, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, automobile parts and audio equipment.

Class 41 Education and training services, namely, providing classes, seminars, workshops in the fields of art, music and artistic performances, fashion, sports, culture, languages, law; entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, languages, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, languages, law.

The objection is maintained for the following goods and services:

Class 9 Motion picture films about video recordings featuring education and entertainment.

Class 35 Retail store services in relation to books, toys.

Class 41 Production of radio and television programmes; film production; educational research services; education and training services, namely, providing classes, seminars, workshops in the fields of general human interest, film production, science and technology; providing television programmes, not downloadable, via video-on-demand transmission services; arranging and conducting seminars in the field of general human interest, film production, science and technology; Arranging and conducting educational congresses in the field of general human interest, film production, science and technology; publication of electronic books and journals on-line.

Inherent distinctiveness

General remarks

Under Article 7(1)(c) EUTMR, ‘trade marks which 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 or of rendering of the service, or other characteristics of the goods or service’ 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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered. According to established case-law, the signs referred to in that provision are signs which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services bearing the trade mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (17/01/2013, T‑582/11 & T‑583/11, Premium XL / Premium L, EU:T:2013:24, § 13; 28/04/2015, T‑216/14, EXTRA, EU:T:2015:230, § 14).

Moreover, it is 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; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

Objection

As the Office pointed out in the objection letter of 20/12/2019

The relevant Spanish-speaking consumer would understand the sign as having the following meaning: ‘wolf’.

The abovementioned meaning of the word composing the trade mark can be supported by the following dictionary references:

LOBO ‘wolf’.

(information extracted from Collins Dictionary online on 20/12/2019 at

https://www.collinsdictionary.com/dictionary/spanish-english/lobo ).

In the present case, the relevant consumers would perceive the sign as providing information that the goods and services in question, such as films, retail services in relation to books, production of television programmes, education services, in Classes 9, 35 and 41 all provide information about wolves (and in the case of retail services sell products focusing on wolves). Therefore, the sign describes the subject matter and intended purpose of the goods and services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Relevant public

It is settled case-law that the distinctive character of a trade mark must be assessed by taking into account, first, the goods or services for which registration has been applied for and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question and who are sufficiently well informed and reasonably observant and circumspect (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 67; 29/04/2004, C‑473/01 P & C‑474/01 P, Tabs (3D), EU:C:2004:260, § 33).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42; 07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18).

In view of the nature and purpose of the goods and services to which an objection has been raised, the relevant public is composed of the general public, whose level of attention will be average.

The sign applied for is a word that can be found in Spanish, meaning that account must be taken of the point of view of Spanish-speaking consumers.

The relevant public is at least the public in Spain.

Since the relevant consumers are not very attentive, if a sign does not immediately indicate the origin or intended use of the object of their intended purchase but just gives them purely promotional, abstract information, they will not take the time either to enquire into the sign’s various possible functions or mentally to register it as a trade mark (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28-29; 11/12/2012, T‑22/12, Qualität hat Zukunft, EU:T:2012:663, § 30).

Furthermore, according to Article 7(2) EUTMR, a trade mark must not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an objection pertaining to the Spanish-speaking public of the European Union is deemed sufficient to reject a trade mark application.

Article 7(1)(b) and (c) EUTMR

The mark applied for is the word ‘LOBO’.

The applicant contests that ‘LOBO’ is the ordinary word in English, but by that it mixes the relevant public to which the objection has been raised by the Office. As it is clear from the Office objection, the sign would be understood as ‘wolf’ by the Spanish-speaking public and is therefore descriptive for the remaining objected goods and services. Even though the word ‘LOBO’ can be found in general English dictionaries (such as Collins English Dictionary or LEXICO Oxford Dictionaries) as a term referring to ‘a timber wolf’, its use is limited to the south-western United States and therefore the English-speaking public in the European Union has not been mentioned in the objection letter of 20/12/2020 by the Office. However, the sign consists of a standard Spanish word that can be found in general Spanish dictionaries and makes perfect sense for the remaining objected goods and services in question. The applicant did not limit the list of goods and services after the Office raised its partial objection. The sign will be understood by the relevant public as information about the subject.matter and intended purpose of the goods and services in question.

The examination of applications for registration must not be minimal, but must be stringent and full to prevent trade marks from being improperly registered and to make sure that, for reasons of legal certainty and sound administration, trade marks whose use could be successfully challenged before the courts are not registered (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59).

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods and services relating to their market value which, while not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods and services (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

A word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47).

It does not matter whether the sign at issue can have several meanings or whether its meaning is less obvious, as neither would suffice to make it distinctive. A sign is distinctive only when it can be immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so 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).

The term, in relation to the goods and services for which protection is sought, would be perceived by the relevant public as referring to their specific characteristics (subject matter and intended purpose). Therefore, the sign describes the subject matter and intended purpose of the goods and services in question.

Such a link between the sign and the goods and services to which an objection has been maintained is sufficiently direct and specific. The meaning of the sign would not be seen as vague, as it directly and clearly refers to the goods and services in question.

The word ‘LOBO’ is a meaningful, simple, straightforward, short Spanish term that is not able to distinguish the goods and services in question from the same goods and services delivered by other undertakings.

Moreover, a sign must be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). This well-established principle applies in this case, as this sign has a meaning that designates a characteristic of the goods and services concerned.

The sign ‘LOBO’ is not unusual. It does not constitute a play on words or introduce elements of conceptual intrigue or surprise so that it may be perceived as imaginative, surprising or unexpected. The sign has no particular originality or resonance, does not trigger a cognitive process in the minds of the relevant public nor require an interpretative effort.

The meaning of the word composing the sign will be obvious to the relevant public, and the expression ‘LOBO’ will most certainly be recognised and understood in its common and ordinary meaning as described by the Office.

There is nothing about the expression ‘LOBO’ that might, beyond its obvious informational meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods for which protection is sought. The Spanish-speaking public in the European Union will not see the mark ‘LOBO’ as a badge of a particular trade origin for the goods at issue, but rather as a banal informational message.

As regards the applicant’s argument that the goods and services are not the ‘LOBO’ itself and that ‘it is hard to tell there will be a TV show or book providing information about LOBO animal’, it must be observed that where a sign consists exclusively of a word that describes what may be the subject matter or content of the goods or services in question, it should be objected to under Article 7(1)(c) EUTMR. Commonly known terms likely to be linked to a particular product or activity by the relevant public are capable of describing subject matter and should therefore be kept free for use for other traders (12/06/2007, T‑339/05, Lokthread, EU:T:2007:172, § 27).

The sign is formed by a very basic word and it will undoubtedly be perceived by the relevant public as descriptive of the subject matter of those goods or services for which protection is sought. Such a widely-known term that is understood in a generic way will immediately create a link to an animal as the subject matter of the goods and services in question.

In the case of services, it can reasonably be assumed by the relevant public that the applicant as a service provider offers the services in question as specialised and related to the animal ‘LOBO’ as the subject matter and/or intended purpose of these services.

It cannot be ruled out that other undertakings trading in goods and services of the relevant kind will think of the common term ‘LOBO’ and want to use it in connection with similar goods and services; those other undertakings would not be trying to take advantage of an established brand or reputation, but rather wanting to use the standard expression because it forms part of the common language. Therefore, such generic term should be kept free for use for all traders.

According to case-law, Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and/or services. Sometimes this is also referred to as vague or indirect references to the goods and/or services (31/01/2001, T‑135/99, Cine Action, EU:T:2001:30, § 29). However, there is clear (not vague) and direct reference to the goods and services at issue.

Although signs with a low degree of distinctiveness under Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctiveness, and accordingly have a limited scope of protection, and those which are devoid of any distinctive character. This is because distinctive character means that the trade mark applied for guarantees the identity of the origin of the marked product or service to the consumer or end user by enabling them, without any possibility of confusion, to distinguish the product or service from others that have another origin (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547).

Given this, the mark applied for does not have a minimum degree of distinctiveness sufficient to render inapplicable the present ground for refusal (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39).

The application of Article 7(1)(c) EUTMR does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

Where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of goods and services that are likely to be known by anyone and are in particular known by the consumers of those goods and services (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 29). In such a case, the Office is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

Since the applicant claimed that the trade mark sought was distinctive, despite the Office’s analysis based on the abovementioned experience, it was for the applicant to provide specific and substantiated information to show that the trade mark sought had either intrinsic distinctive character or distinctive character 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). However, the applicant did not submit any such information.

On this basis, in relation to the goods to which an objection has been raised, the word mark applied for, ‘LOBO’, has no features that might lead the relevant public to believe that it is an indication of commercial origin.

Acquired distinctiveness through use - Article 7(3) EUTMR

In addition to the abovementioned arguments, in the application for the registration of the EUTM, the applicant included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. The applicant also indicated that this claim was meant as a primary claim.

In the claim, the applicant did not indicate in relation to which goods and services the trade mark applied has acquired distinctiveness through use, therefore the Office assumed that the claim encompass all the goods and services listed in the application.

However, the applicant did not submit any evidence within the time limit.

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

Conclusion

For the reasons set out above, and in the previous notification, the sign does not possess the necessary distinctive character for the goods and services indicated, pursuant to Article 7(1)(b) and (c) EUTMR in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, that is to say, it fails to distinguish the goods and services in question from those of other undertakings.

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 18 164 004 is hereby rejected for the following goods and services(¹):

Class 9 Motion picture films about video recordings featuring education and entertainment.

Class 35 Retail store services in relation to books, toys.

Class 41 Production of radio and television programmes; film production; educational research services; education and training services, namely, providing classes, seminars, workshops in the fields of general human interest, film production, science and technology; providing television programmes, not downloadable, via video-on-demand transmission services; arranging and conducting seminars in the field of general human interest, film production, science and technology; arranging and conducting educational congresses in the field of general human interest, film production, science and technology; publication of electronic books and journals on-line.

The application will proceed accordingly for the following goods and services(²):

Class 9 Computer hardware; computer hardware and peripheral devices and software for playback, streaming, transmitting, receiving audio-visual media content via the internet; computer software, namely, downloadable computer software for word processing, computer software for document management, for database integration, for producing financial models, for use in database management; computer software for authorizing access to databases; computer software for creating searchable databases; computer software for use in customer relationship management (CRM); computer software to automate data warehousing; software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; computer software, namely, communications software for connecting computer network users; computer software for use in providing multiple user access to a global computer information network; e-commerce software to allow users to perform electronic business transactions via a global computer network; computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; computer games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones; computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; interface cards for data processing equipment in the form of printed circuits; computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs; computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards; electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals; electronic circuits and printed electronic circuits; electric wires for communication equipment; graphite and fuel cell electrodes; telephones; radio, television and satellite aerials; batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras; microprocessors; computer keyboards; Motion picture films about video recordings featuring music and artistic performances, fashion, sports and culture.

Class 25 Clothing, namely, shirts, pants, coats, suits, dresses; casual, children’s, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes.

Class 35 Provision of information and advisory services relating to e-commerce; provision of information relating to market studies; provision of market research information; advertising and business management consultancy; personnel recruitment; personnel management consulting; advertising agency services; advertising the goods and services of others; mediation of contracts for purchase and sale of products and services; advertising services for promoting the brokerage of stocks and other securities for others; advertising services of a radio and television advertising agency; negotiation of business contracts for others; business management and organization consultancy; computerized file management; rental of advertising space; rental of advertising space on web sites; leasing of office equipment; rental of office machinery and equipment; market analysis and research services; market research studies; computer database management services; Retail store services in relation to clothing, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, automobile parts and audio equipment.

Class 38 Telecommunication services, namely, internet access provider services and provision of telecommunication access to films and television programs provided via a video-on-demand service, wireless digital messaging services, electronic mail services through wired and wireless access, paging services, wireless digital messaging services, webcasting and podcasting of music, fashion shows and television programs, providing electronic message alerts via the internet, personal communication services; communication services, namely, electronic transmission of voices, transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; telecommunication bundle services that allow customers to reach cellular phones, voicemail and call routing between wireline and wireless phones and voicemail boxes; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; broadcasting and transmission of television programs; simulcasting broadcast television over global communication networks, the Internet and wireless networks; video on demand transmissions; providing access to digital music websites on the internet; provision of access to the Internet; provision of access to a global computer network; video-on-demand transmission services; satellite telephone transmission.

Class 41 Law enforcement training services; language training services; presenting live musical performances; film distribution; education and training services, namely, providing classes, seminars, workshops in the fields of art, music and artistic performances, fashion, sports, culture, languages, law; entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, languages, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, languages, law.

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.

Jiri JIRSA