Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 01/09/2020

LANE IP LIMITED

The Forum, St Paul’s

33 Gutter Lane

London EC2V 8AS

REINO UNIDO

Application No:	018225302
Your reference:	1517.0023
Trade mark:	THE SOCIAL DISTANCER
Mark type:	Word mark
Applicant:	Promark Electronics Inc. 215 Rue Voyageur Pointe-Claire Quebec H9R 6B2 CANADÁ

The Office raised an objection on 22/04/2020 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 requested an extension of the time limit on 16/06/2020 and submitted its observations on 26/08/2020, which may be summarised as follows.

1. The connection between the meaning of the sign ‘THE SOCIAL DISTANCER’ and particular characteristics of the goods for which objection has been raised is insufficiently direct to give rise to an objection pursuant to Article 7(1)(c) EUTMR. The sign is different from the term ‘social distancing’, commonly used in relation to the outbreak of COVID-19. The sign ‘THE SOCIAL DISTANCER’ is not a common term (a search for the phrase locates no results) and is only suggestive of a person or object that social distances. The expression would not be relevant and useful when negotiating a trade or sale of the goods in question since further thought is required in order to interpret its meaning. Consequently, the sign ‘THE SOCIAL DISTANCER’ is not descriptive of the goods in question.

2. Even though the compound mark ‘THE SOCIAL DISTANCER’ does not demonstrate a high level of linguistic imagination, it’s assessment must be based on the overall perception by the relevant public taking into account that no minimum level of imagination or artistic creativity is required in order to overcome objection under Article 7(1)(b) EUTMR. The sign has at least a minimum distinctiveness in relation to the goods for which protection is sought and therefore will be perceived by the relevant public as an indication of origin.

3. The Office has already accepted similar marks for registration (figurative EUTM 18226452 ‘SOCIAL DISTANCING: DO IT TOGETHER’ in Classes 7 and 11).

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.

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).

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.

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).

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

The absolute grounds for refusal for a lack of distinctive character and the characteristics of descriptive and common indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is sufficient, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) should apply notwithstanding that the grounds preventing registration obtain in only part of the European Union.

1. Firstly, the applicant claims that the connection between the meaning of the sign ‘THE SOCIAL DISTANCER’ and particular characteristics of the goods for which objection has been raised is insufficiently direct to give rise to an objection pursuant to Article 7(1)(c) EUTMR.

However, the Office maintains its position that the compound word mark ‘THE SOCIAL DISTANCER’ will inform the relevant consumer that the goods for which the objection has been raised serve for establishing and maintaining the social distance.

It must be recalled that 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).

The Office observes that the mark ‘THE SOCIAL DISTANCER’ is neither striking nor unusual. It is grammatically correct and is composed of the words which all have dictionary definitions. Moreover, the fact that the term “social distancing” is being widely used due to the outbreak of COVID-19 will only reinforce the descriptive meaning of the sign. The term “social distancing” refers to a set of non-pharmaceutical interventions or measures taken to prevent the spread of a contagious disease by maintaining a physical distance between people and reducing the number of times people come into close contact with each other¹. The word “distancer” indicates means for establishing distance². Together, the compound mark ‘THE SOCIAL DISTANCER’ will inform that the goods in question serve for establishing and maintaining the social distance.

In particular, as indicated in the objection letter of 22/04/2020, the relevant consumers would perceive the sign as providing information that mobile transmitting and receiving units for remote monitoring of the location of an individual or group of individuals will enable monitoring of people with the aim of keeping the social distance. Consequently, various distance alert tools (emergency response system consisting of a wireless alert transceiver that can be worn on the body; portable wearable tracking system, namely, real time tracking device for determining proximity with other tracking devices) will produce an alert or a signal if the social distancing is not respected. The monitoring data will be processed with the help of computer application software that allows transmission of electronic data, namely text, audio, image and video files relating to a user wearing a tracking device. Moreover, online computer network for retrieving and storing electronic data, namely text audio, image and video files transmitted from a wireless alert device will enable tracking of data to ensure the social distancing. Therefore, the sign describes the intended purpose of the goods in question, i.e. to establish and maintain social distance.

In reply to the applicant’s argument that the term ‘THE SOCIAL DISTANCER’ is not a common term, it must be recalled that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision 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).

Therefore, the Office considers that the mark ‘THE SOCIAL DISTANCER’ would be used as a descriptive term to designate, either directly or by reference to one of their essential characteristics, the goods in respect of which registration is sought. Consequently, the sign ‘THE SOCIAL DISTANCER’ is descriptive of the goods in question.

2. Secondly, the applicant claims that the sign has at least a minimum distinctiveness in relation to the goods for which protection is sought and therefore will be perceived by the relevant public as an indication of origin.

However, according to the case-law of the Court of Justice, the fact that a sign informs the public of a characteristic of the goods and services is relevant to conclude that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, ‘Deutsche Krankenversicherung’, paragraph 21). Since the sign ‘THE SOCIAL DISTANCER’ is descriptive of the goods concerned, it is, on that account necessarily devoid of any distinctive character in respect of those goods for the purposes of Article 7(1)(b) EUTMR.

3. Finally, as regards the applicant’s argument that the Office has already accepted similar marks for registration (EUTM 18226452 ‘SOCIAL DISTANCING: DO IT TOGETHER’ in Classes 7 and 11), according to 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; and 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).

In any event, the registered trade mark relied on by the Applicant is not identical to the trade mark applied for in the present case. The registered EUTM 18226452 ‘SOCIAL DISTANCING: DO IT TOGETHER’ is a figurative mark where pictogram (not the word element) is the dominant part of the trade mark. The sign for which protection is sought ‘THE SOCIAL DISTANCER’ is a word mark. Examination of the European Union trade mark application under Article 7 EUTMR is different for word and figurative marks and requires separate examination. Therefore, the reasons for their registrations would not necessarily apply to the applicant’s mark in question.

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 18225302 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.

Laima IVANAUSKIENE