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:	018164011
Your reference:
Trade mark:	MAGENTA
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 23/03/2020, 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 23/03/2020 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 19/12/2019 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 22/01/2020, which may be summarised as follows:

1. The applicant largely quoted the CJEU case-law and the court decisions adopted in third countries. It claimed that the sign is inherently distinctive and does not directly refer to the characteristics of the goods applied for.

2. The applicant agrees with the Office that ‘MAGENTA’ is a name of a colour, but argues that the word ‘MAGENTA’ has several other meanings, and is used for places, people, bands and characters.

3. The sign meets the minimum threshold standard of distinctiveness and is original. The colour MAGENTA is not usually a feature of the goods in question and colour differentiation in the commercial marketplace shows that such a colour is more commonly used in other industries.

4. The applicant referred to consistency with the principles of equal treatment and sound administration and pointed out that the Office, UKIPO and USPTO have accepted trade marks containing colour names, such as, inter alia, UK No 3 185 350 ‘MAGENTA’, EUTM No 5 396 379 ‘ORANGE’, US No 5 658 192 ‘MAROON T-SHIRT’, all of which cover Class 25 goods, including clothing.

5. The applicant submitted two documents titled ‘Colours of industries’.

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 maintain the objection.

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 19/12/2019

the relevant English-speaking consumer would understand the sign as having the following meaning: magenta.

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

MAGENTA ‘A light mauvish-crimson which is one of the primary subtractive colours, complementary to green.’.

(information extracted from Lexico Oxford dictionaries online on 18/12/2019 at https://www.lexico.com ).

In the present case, the relevant consumers would perceive the sign as providing information that the goods in question, such as clothing, in Class 25 are all manufactured in magenta colour. Therefore, the sign describes the kind and colour of the goods 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, § 2; 07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18).

In view of the nature and purpose of the goods to which an objection has been raised, and contrary to the applicant’s view, the relevant public is composed of the general public, whose level of attention will be average, as the goods in question are mainly mass-produced goods for daily use.

The words of the sign applied for are English words, meaning that account must be taken of the point of view of English-speaking consumers, or consumers who are not English speakers but who have sufficient knowledge of English (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 76).

The relevant public is at least the public in Ireland, Malta and the United Kingdom.

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 is purely promotional, abstract information, they will not take the time either to enquire into the sign’s various possible functions or to mentally 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 English-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 expression ‘MAGENTA’.

The applicant does not contest that ‘MAGENTA’ is the name of a colour, as pointed out by the Office, yet claims that the sign has other meanings. However, the sign is standard word that can be found in general dictionaries and makes perfect sense for the goods in question. The applicant has not limited the list of goods after the Office raised its partial objection. The sign will be understood by the relevant public as information linked to the colour of the goods 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 that 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).

As confirmed by the Court, 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 expression as a whole, in relation to the goods for which protection is sought, would be perceived by the relevant public as referring to specific characteristics (colour variation) of clothing. Therefore, the sign describes the kind and characteristics of the goods in question.

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

The expression ‘MAGENTA’ contains a meaningful, simple, straightforward, short English expression that is not able to distinguish the goods in question from the same goods delivered by others.

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 concerned.

The sign ‘MAGENTA’ 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 and does not require an interpretative effort.

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

There is nothing about the expression ‘MAGENTA’ 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 English-speaking public in the European Union will not see the mark ‘MAGENTA’ as a badge of a particular trade origin for the goods at issue, but rather as a banal informational message.

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, contrary to the applicant’s arguments, it was clearly shown that there is clear (and not vague) and direct reference to the goods 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).

Regarding the applicant’s argument that the sign is not customary in the trade, 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).

The Office considered the applicant’s submission of two documents titled ‘Colours of industries’, but the applicant’s failure to provide any identification of their sources made it impossible to check the accuracy and authenticity of the information provided.

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, ‘MAGENTA’, has no features that might lead the relevant public to believe that it is an indication of commercial origin.

Previous registrations

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to the settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, 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; 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

‘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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The previous registrations were found to be distinctive in their own right. The mere fact that they contain colour names cannot support the registrability of the sign at issue.

Furthermore, the marks cited by the applicant have different meanings from the present sign.

The acceptance of the signs ‘MAGANTA’ by the UK Intellectual Property Office (UKIPO) has been taken into account. However, the Office does not consider that it should follow the UK example, for the reasons stated above. National decisions cannot relieve the Office of its duty to arrive at its own reasoned decision and, furthermore, the Office is not bound by national office decisions (27/02/2002, T‑106/00, ‘Streamserve’). It follows that it is the trade mark law of the U.K. which determines whether the signs were validly acquired and what scope of protection they have.

The same reasoning is also valid for the USPTO decisions as US trade mark law is significantly different from EU trade mark law practice. The settled case-law makes it clear that the Office is not bound by decisions of national or third-party authorities:

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).

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, the 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 is descriptive and does not possess the necessary distinctive character for the goods in question within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, that is, it fails to distinguish the goods 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 18 164 011 is hereby rejected for the following goods ¹:

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.

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, education, entertainment, fashion, sports and culture.

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, books, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, toys, 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; transmisión 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 Production of radio and television programmes; film production; educational research services; education and training services, namely, providing classes, seminars, workshops in the fields of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; law enforcement training services; language training services; entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; presenting live musical performances; film distribution; providing television programmes, not downloadable, via video-on-demand transmission services; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; publication of electronic books and journals on-line.

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