Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 01/12/2020

MARKS & CLERK LLP

15 Fetter Lane

London London EC4A 1BW

REINO UNIDO

Application No:	018242622
Your reference:	ASH/TN837809EMA
Trade mark:
Mark type:	Figurative mark
Applicant:	BRIDGESTONE CORPORATION 1-1, Kyobashi 3-chome, Chuo-ku Tokyo JAPÓN

The Office raised an objection on 10/06/2020 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 3/8/2020, which may be summarised as follows:

1. When applied in the context of Article 7(1)(b), this must be interpreted as meaning a trade mark that has no distinctive character. The word “devoid” is an absolute and requires no further elaboration as the addition of the word ‘any’ to create a tautology clearly articulates the intention of the legislature to exclude trade marks that possess no distinctive character whatsoever from registration.

2. Therefore, if a mark possesses any attribute(s) that would enable the relevant public to identify the goods and services covered by the application as originating from the Applicant as opposed to another undertaking then the mark cannot be devoid of any distinctive character and Article 7(1)(b) should not apply.

3. A minimum degree of distinctive character is enough, and the overall impression given must be considered.

4. It is not possible to exclude a mark from registration on general and abstract grounds, that it is devoid of distinctive character.

5. The distinctive character of a trade mark must be assessed by reference to the perception of the consumers of the goods and services covered by the mark ('the relevant public')

6. The sign applied for is described by the applicant as a continuous outline representing a passenger car, a battery symbol, and a cable connecting the two.

7. The applicant believes that the sign when taken as a whole is arbitrary and fanciful. It must be remembered that the analysis is with respect to the perception of the average consumer and that they normally perceive a mark as a whole rather than analysing various details (ECJ, 7 October 2004, Mag Instrument/OHIM, C-136/02 P, paragraph 20). Even if the individual elements were found to be non-distinctive, this does not mean that the overall combination cannot have a separate distinctive character

8. The applicant agrees that the outline of the mark will be perceived as a pictoral representation of a car. However, the applicant considers that the battery symbol is ambiguous when shown inside and connected to the car as in the sign applied for.

9. Batteries have been present in the car since the early 20^th century. Nowadays, passengers and drives can access power in car by means of an adaptor or a plug socket connected to the battery. The battery symbol can also appear on the vehicle dashboard

10. More recently Battery Electric Vehicles (BEVs) and Hybrid Electric Vehicles (HEVs) are recharged via a connection to an external power grid usually by a plug

11. The battery of the sign is ambiguous. The Wikipedia site for ‘car battery’ redirects to ‘automotive battery’ and contains a statement explaining that the article is about batteries that start engines and power accessories, and that the reader should go to another page for information about batteries that power electric vehicles.

12. Searching with Google images search engine representations of ‘battery symbols’, and different representations of batteries appear in different representations, all of them attached in Annex A submitted by the applicant. For example, some of the representations appearing in such Annex:

13. As confirmed by the Court of Justice, a trade mark must not contain ‘striking characteristics’, but the identification function can be performed by a well-known or commonplace sign

14. The objected good such as ‘tiers’, ‘inner tubes’, ‘rims’ and ‘adhesive rubber patches are goods used for all types of vehicles with no particular connections to batteries.

15. The applicant does not agree

16. The applicant refers to the Office’s arguments on page 3 which state that electric vehicles wear out tires much faster than other types of vehicles. The applicant maintains that it is not clear how this is related to the argument of non-distinctiveness. The ambiguity of such statement does not allow the applicant to present their views, and requests to disregard such statement.

17. Due to the Vienna Convention on Road Signs and Signals 1978, most EU road signs are harmonized so that consumers can easily recognize road signs that provide information about road services, directions or danger. Such signs, when showing passenger cars, are extremely simplified front facing silhouettes such as for example:

18. The outline of cars is by no means the only way of indicating to the consumer information about vehicle products.

19. In combination with the additional elements, particularly the internal battery symbol, the overall impression is quite removed from electric vehicles and the goods and services applied for and the mark is distinctive as a whole.

20. The Applicant has attached an Annex B written by Cleans Fuels Consulting Llc, a consulting company seated in Brussels, Belgium. The report was prepared for the Argonne National Laboratory and U.S. Department of Energy on the Harmonization of Road Signs for Electric Vehicle Charging Stations in November 2012.

21. In 2012 there were no harmonized electric vehicle signs in use, but a variety of different symbols were used in European countries including the United Kingdom, Belgium, Denmark and France. The signs that were used were quite different from the sign applied for.

22. Annex B shows different examples of “charging points” for electric vehicles (EV) in London, Sweden, Belgium, France.

23. None of these symbols resemble the sign applied for and that none of them contain a battery. Furthermore, none of the symbols has an internal battery in the main body of the car connected to the vehicle itself. The symbols used universally in the European Union contain a plug device external to the car, usually in combination with a charging station for Electric Vehicles.

24. The Applicant refers to the European Committee for Standardization recently established harmonized labels to indicate power supply for electric vehicles:

25. In Annex C, the applicant refers to similar marks registered at the Office: EUTM 15175524 ,EUTM 10727808 , German Mark 302010026231 , French , IR Registrations for France, UK, Spain, Italy designations , UK Registration No. 2514719

26. The present case is not a basic geometrical figure. The Applicant has submitted judgments of the General Court and the Boards of Appeal that support the registration of similar marks, such as for example Case T-128/01 , Decision of the Boards R833/2004- 1 , Decision of the Boards R 2502/2015-2 , Decision of the Boards R 908/2016–4

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).

In accordance with the Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words from 2 October 2015, the so-called Convergence Project 3 [CP3], available under www.tmdn.org/network/congerging-practices , whether the figurative element is a representation of, or has direct link with, the goods and/or services, a figurative element is considered to be descriptive and/or devoid of distinctive character whenever… In general, figurative elements that are commonly used or customary in trade in relation to the goods and/or services claimed do not add distinctive character to the mark as a whole (see page 5 of the Common Communication).

The applied sign is commonly used and is customary in trade in relation to electric cars with a rechargeable battery. The goods applied for, which are tires for cars or other vehicles, would be identified by the relevant consumer, who is an average as well as a specialized professional, as tires specially designed and produced for electric cars or electric vehicles.

As argued in the Office’s objection letter, the goods applied for are specially designed for electric cars. Electric vehicles wear out tires much faster, than other types of vehicles, as much as 30 percent quicker, as shown in the links submitted in the Office’s objection letter (search done again on 1/12/2020):

https://insideevs.com/news/343455/pirelli-showcases-performance-tires-built-forelectric-cars/

https://drivemag.com/news/developing-special-tires-for-electricvehicles-what-are-the-challenges

https://www.wired.com/2016/05/hidden-battlemake-perfect-tires-electric-car-divas/

Thus, the design of specific tyres for electric cars and vehicles is of extreme importance for the industry. Electric Vehicles require special tyres. To identify such tyres with a symbol which is immediately identified with electric cars, renders the applied sign as non-distinctive and incapable of identifying the sign as a badge of origin of the goods applied for.

The applied sign is commonly used in trade as a representation for electric cars, as can be seen in the following examples:

https://is.gd/r50RPO

https://is.gd/EzAhum

https://is.gd/9ZZlg1

https://is.gd/rOtPJp

https://thenounproject.com/term/electric-car/305781/

https://is.gd/9KIP8p

https://is.gd/wfAigx

https://is.gd/UK7MMM

https://is.gd/S2GB5y

https://is.gd/DO0Oty

(All Google searches done 1/12/2020)

As shown above the images provided resulted from a random search in Google Images. The images are just examples, but there are an unlimited amount of representations of electric rechargeable cars which contain a battery inside. The battery sign is not ambiguous, special, characteristic, unique. The whole sign applied for, is merely a common representation of electric cars and vehicles. The applied sign will be immediately perceived as the representation of an electric car or vehicle. The goods applied for, tyres, will be immediately linked as tyres to be used or mounted for electric cars or vehicles. Thus, the sign is non-distinctive for the goods applied for.

The examples of Google Images attached by the applicant in Annex A, show numerous types of batteries. However, the sign is not only the representation of a battery, but as a whole, the representation of a rechargeable car or vehicle, i.e. a car or vehicle with a battery. This is obvious as shown in the Google findings above.

The applicant’s reference to the Vienna Convention on Road Signs and Signals from 1978 in Annex B, is immaterial to the case. The representations are very different when France, United Kingdom, Sweden or Belgium signs are compared. It is obvious, that there is not an international standardised sign or signal yet for electric vehicles or cars. What is well known, is that the sign applied for is immediately identified by any relevant consumer as the depiction of an electric car.

The applicant refers to similar marks accepted by the Office in Annex C. First, the examination of trade marks applications must be full and stringent and not limited to signs which appear to be ‘manifestly unregistrable’ (see Judgment C-363/99 of 12/02/2004, Postkantoor, par. 125).

Secondly, the Court has consistently reasoned that whilst there is a general principle of equal treatment, such principle must be reconciled with 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).

Thirdly, ‘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).

Fourthly, the applicant refers to some national registrations in France and Germany. 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 242 622 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.

Claudio MARTINEZ MÖCKEL