Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/05/2020

ADVOKATFIRMAN NORDIA

Kungsportsavenyen 1

SE-411 36 Göteborg

SUECIA

Application No:	018200812
Your reference:	TM2853EU
Trade mark:	EXPERIENCE VISUAL COMFORT
Mark type:	Word mark
Applicant:	Visual Comfort of America, LLC 22400 Northwest Lake Drive Houston Texas 77095 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 11/03/2020 pursuant to Article 7(1)(b) EUTMR 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 letter.

2. The applicant submitted its observations on 29/04/2020 which may be summarised as follows:

• The applicant holds that the interpretation of the Office is incorrect and that the mark is sufficiently distinctive.

• The term “visual” comfort is not commonly used in the same sense as e.g. “physical” or “emotional” comfort. The correct term to express what the Office is attributing to the mark would rather be “easy on the eyes”.

• “Experience visual comfort” is an inventive wordplay that surprises the English-speaking consumer and requires interpretive effort. The wording “experience visual comfort” can also mean experience the Applicant which operates under the name Visual Comfort. Thus, the mark could have various meanings.

• Performing a simple Google search for “visual comfort” produces large amount of hits whereby the first pages of results refer solely to the applicant. This goes to show that the term is not a mere marketing message.

• The applicant has obtained registration for the EUTM 011733417 VISUAL COMFORT & CO. In addition, the applicant has also filed for both UK and US trade mark applications for the identical mark. Neither the UKIPO or the USPTO have raised similar concerns as the EUIPO.

• The applicant refers to case law in support of its arguments.

3. 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.

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The Office cannot find anything distinctive about the slogan EXPERIENCE VISUAL COMFORT in relation to the goods and services applied for (which all are related to lighting and lighting accessories). It is a typical promotional slogan which conveys the clear message of a visual experience that is comforting and soothing to the eyes. Lightning products can certainly be adapted to be comfortable for the eyes, such as by using natural lighting techniques (rather than bright artificial lighting that can be harsh to the eyes).

Applied to the goods and services in question, the mark will merely be perceived as a customer service statement, namely that the applicant through its goods and services will provide the consumer with a comfortable visual sensation.

It may be that the expression “visual comfort” is not very commonly used in the same sense as e.g. “physical comfort”; it will nevertheless immediately be understood as something that brings a comfortable sensation to the eyes.

Moreover, ‘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 … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

The phrase EXPERIENCE VISUAL COMFORT is far from a surprising and inventive play on words. No interpretation whatsoever is needed in order to grasp the message conveyed by the mark. Even if the words “Visual Comfort” are included in the applicant’s company name it is unlikely that the consumer will perceive the mark as “experiencing the applicant”. The first thing that comes to mind is the experience of a certain sensation, namely a comfortable ocular sensation.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so as to 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).

That is not the case here.

When performing a Google search for the full expression “EXPERIENCE VISUAL COMFORT” it produces several hits (including on the first page) that does not refer to the applicant, see for example (search performed on 15/05/2020):

. LIGHT IGLOO to experience visual comfort and discomfort 

https://www.saint-gobain.com/en/saint-gobain-stories/domolab-inventing-tomorrows-habitat

Francis D. K. Ching - 2020 - ‎Architecture

... direct glare, expressed as the percentage of people who maybe expected to experience visual comfort when seated in the least-favorable visual position.

https://books.google.es/books?id=mV07BAAAQBAJ&pg=PA40&lpg=PA40&dq=%22EXPERIENCE+VISUAL+COMFORT+%22&source=bl&ots=GykJZJUDn3&sig=ACfU3U25FX1abNheAMeiOPNYzNKKUXal5g&hl=en&sa=X&ved=2ahUKEwi88KKfzbXpAhU5A2MBHXXDAMIQ6AEwB3oECAcQAQ#v=onepage&q=%22EXPERIENCE%20VISUAL%20COMFORT%20%22&f=false

As regards the applicant’s registration for the EUTM 011733417 VISUAL COMFORT & CO; the addition of “& CO” gives the mark a different connotation. It is more likely to be perceived as the name of a company than referring directly to a visual sensation.

On the other hand, the Office refused the application 014202618 – EYECOMFORT for goods in class 11.

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).

The Office does not agree with the decisions taken by the UKIPO and USPTO and struggles to find anything distinctive (such as a play on words, elements of conceptual intrigue, originality or unusual syntactic structure) in the mark.

In the absence of an additional distinctive element, such as a company name or a fanciful logo, there is nothing in the mark that might enable the relevant public to perceive the mark as an indication of the commercial origin of the goods and services.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 018200812 is hereby rejected for all the goods and services claimed, namely for:

Class 11 Indoor and outdoor electric lighting fixtures; electric lamps.

Class 35 Online retail store services for lighting and accessories; retail store services for lighting and accessories; wholesale for lighting and accessories; lighting plan commercial consulting for lighting and accessories; product selection commercial consulting for lighting and accessories.

Class 42 Lighting plan design for lighting and accessories.

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.

Cecilia ALIN