Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/08/2020

LØJE IP

Øster Alle 42, 6. Floor

DK-2100 Copenhagen Ø

DINAMARCA

Application No:	18 212 521
Your reference:	TM16383EU01_EHL
Trade mark:	ECOSMART
Mark type:	Word mark
Applicant:	Home Depot International, Inc. 2455 Paces Ferry Road Northeast Atlanta Georgia 30339 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/04/2020 pursuant to Article 7(1)(b) 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.

The applicant submitted its observations on 03/06/2020 which may be summarised

as follows:

1. Distinctive character in relation to the

sign at issue

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.

1. Distinctive character in relation to the

sign at issue

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.

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).

Applicant´s remarks

The sign applied for is a lexical neologism. If the average consumer were to follow the train of thoughts argued by the Office, the mark must be seen as an unusual and distinctive since the average consumer would need to invent. In order to arrive at the first alleged descriptive meaning “ecological and smart” and in case of the other alleged meaning “ecologically smart” the composition of the mark applied for is unusual as it should have been composed of an adverb and an adjective for the consumer to perceive it as “ecologically smart” whereas it is – according to your dictionary references – composed of two adjectives ECO and SMART.

Even if the first element in the mark ECO may be perceived by some relevant English-speaking consumers as referring to ‘ecology’, the meaning of the abbreviation cannot be said to be unequivocal since ECO is also used as an abbreviation for e.g. “economy” and numerous other abbreviations.

The designation SMART is first and foremost an adjective used to describe persons having or showing a high degree of mental ability and use of SMART for things is not common or widespread within the relevant trade. Hence, such interpretation will not be obvious to the average consumer.

Therefore, it is argued that the juxtaposition of the designations ECO and SMART is unusual and when used for the goods covered by the application the neologism is not directly descriptive, but suggestive, at the most, and hence the mark must be found distinctive.

For a designation to be descriptive, there must be a sufficiently direct and specific relationship between the designation and the goods/services in question to enable the relevant consumer to immediately perceive, without further thought, a description of the goods or services in question from one of their characteristics (CFI, 20 November 2007, Tegometall/Wuppermann, T-458/05, §80).

Marks that only suggest or evoke the characteristics of the goods or services are not considered as descriptive – e.g. Vitalité for “food for babies as well as mineral and aerated waters” (CFI, 31-01-2001, The Sunrider Corporation/OHIM, T-24/00, §§21-24); EUROPREMIUM for goods and services in classes 16, 20, 35 and 39 (CFI, 12-01-2005, Deutsche Post EURO EXPRESS/OHIM, T-334/03, §§43); and FUN for land motor vehicles (CFI, 2-12- 2008, Ford Motor Co./OHIM, T-67/07, §§34).

In conclusion, it is argued that there is a perceptible difference between the trademark ECOSMART in its entirety and the mere sum of its two elements and that the neologism does not convey immediate information to the average consumer about the nature of the products when encountering the trademark in a purchase scenario. Since there is a leap of imagination between the ECOSMART mark in its entirety and the goods in question, it is submitted that ECOSMART can and does serve as an indicator of the commercial origin of the products as it creates an impression which is far enough removed from that conveyed by a simple combination of the two word elements.

Office´s comments

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character, it must be considered as a whole. However, that is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, ‘Procter & Gamble’, § 59).

The fact that the two constituent elements of the "ECOSMART" word mark are juxtaposed, forming a single word, does not mean that this is sufficient to make it a lexical invention capable of giving it a distinctive character or to give it an original character which, in any case, it is not a criterion for evaluating the distinctive character of a sign (05/04/2001, EU: T: 2001: 119, T-87/00, Easybank, §40). Furthermore, the required sign is a word composed of two adjectives (“eco” and “smart”) clearly understandable as ecological and smart/intelligent in relation to the goods applied for. The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words known to them (see 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58)..

The two compound elements, ‘eco’ and ‘smart’ are placed in a way that forms a generally understandable combination as a whole, with a sense that will be immediately apparent to the target public without any need for prolonged consideration. The mark is ‘invented’ only insofar as it is a combination of two terms which exist in English and with a clear meaning in relation to the goods applied for. Moreover, both the element ‘eco’ and ‘smart’ and the features that can be called ‘ecological’ and ‘smart/intelligent’ are increasingly common in all fields for manufacturing goods and, especially, in the marketing of goods which are characterized by acting or responding to conditions in a more sophisticated way than is typical.

Therefore, the Office is of the position that the words ‘eco’ and ‘smart’ by the relevant public will be readily perceived as highlighting qualities of the goods in class 11, namely as being environmentally-friendly and smart/ intelligent, in the form of energy-efficient light bulbs and light features with lengthening longevity of the products and/or even smart lighting which may be controlled via your smart phone, tablet, smart home device, etc. The average consumer would simply perceive the message that the goods are ecological and environmentally friendly, that they don't use much power, and that the products incorporate technology for ,i.a., energy-saving purposes.

In that respect, the Office can refer to ‘Hestia’ - an online magazine with the latest news, reviews and tutorials about smart home products and home automation platforms on the European market – which features an article of 11/11/2018 regarding How to Make your Lighting Smart, discussing how you can implement smart, and above all, sustainable lighting, and showing different options to implement smart lights in your home and save expenses on your energy bill, see following excerpt:

https://www.hestiamagazine.eu/how-to-make-your-lighting-smart-here-are-three-options-to-choose-from?gclid=EAIaIQobChMI8-7Ei6m56wIVVYXVCh3NeAYUEAMYASAAEgIJwfD_BwE

As to the applicant´s argument that the mark or element hereof may have several meanings….. does not suffice to make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, thus enabling the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84).

Lastly, the Office shall not omit to draw the attention of the applicant to the following similar EU trade mark applications which have been refused for registration by the Office:

EUTMA no. REPRESENTATION

• 18 051 275 ECOSMART

• 11 511 847 ECO SMART

• 10 955 573 EcoSmart,

• 18 176 429 ECOSMART TANKLESS WATER HEATERS¹

• 14 748 099 eco smart baking

• 13 220 785 ECO SMART CHARGE

• 11 986 247 Eco SmartTimer

Consequently, the Office finds that the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 18 212 521 is hereby rejected for all the goods, namely:

Class 11 Light bulbs; light sources; Christmas tree ornaments for illumination;

Christmas lights for outdoor use.

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.

Finn PEDERSEN