Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/06/2020

DANĚK & PARTNERS

Vinohradská 17

CZ-120 00 Prague 2

REPÚBLICA CHECA

Application No:	018174200
Your reference:
Trade mark:	Bedtime Bulb
Mark type:	Word mark
Applicant:	SimpleBulb Inc. 400 S. 45th St. Unit 1B Philadelphia Pennsylvania PA 19104 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/01/2020 pursuant to Article 7(1)(b), (c) and 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

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).

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 (3D), 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; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

The Office took the view that the relevant English-speaking consumers would understand the sign as having the following meaning: a bedtime bulb (i.e. a bulb which supports sleep).

The abovementioned meanings of the words composing the trade mark can be supported by the following dictionary references:

BEDTIME ‘The usual time when someone goes to bed.’.

BULB ‘A light bulb.’.

(information extracted from LEXICO Oxford dictionaries online on 22/01/2020 at

https://www.lexico.com/).

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 in respect of which registration has been sought and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question, 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 (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 2; 07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18).

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

The verbal element of the sign applied for is formed from English words, meaning that account must be taken of the point of view at least of English-speaking consumers, or even 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.

In the present case, the Office considers that the sign would be perceived by the relevant public as providing information that the goods in question, such as lamps, bulbs, lighting apparatus, etc., in Class 11 are all manufactured with a bulb, designed for the use in bedrooms or kids’ rooms, which help the prospective consumers with their sleep; alternatively the goods in question serve as the accessories of such bulb. Therefore, the sign describes the kind and intended purpose 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.

Moreover, an internet search dated 22/01/2020 has revealed that the words in question are commonly used in the relevant market:

https://www.nytimes.com/2017/02/10/realestate/light-bulbs-that-help-you-sleep.html

https://www.hammacher.com/product/nasa-technology-sleep-promoting-light-bulb

https://www.amazon.co.uk/Lighting-Science-Good-Night-FG-07003/dp/B07HJBZ628/ref=pd_sbs_201_img_0/260-7200455-1543468?_encoding=UTF8&pd_rd_i=B07HJBZ628&pd_rd_r=03c9b87c-d9c6-414e-a942-2dd275267281&pd_rd_w=QEp4s&pd_rd_wg=iSSS1&pf_rd_p=e44592b5-e56d-44c2-a4f9-dbdc09b29395&pf_rd_r=CYG1RRM1N0V86R2YDYSM&psc=1&refRID=CYG1RRM1N0V86R2YDYSM

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the services to which an objection has been raised within the meaning of Article 7(1)(b), (c) and 7(2) EUTMR.

With the notice the applicant was given opportunity to submit observations in reply. 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.

The applicant failed to submit observations within the time limit. Consequently further argumentation is superfluous. For the reasons set out in the letter of objection, and pursuant to Article 7(1)(b), (c) and 7(2) EUTMR, the application for the European Union trade mark in question is hereby rejected for all the goods claimed.

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