Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/02/2021

FRKELLY

27 Clyde Road Ballsbridge

Dublin 4

IRLANDA

Application No:	018252607
Your reference:	TM107576EU00/GF
Trade mark:	TRIO
Mark type:	Word mark
Applicant:	Mobile Pixels Inc 5268 Rivergrade Road Irwindale, California 91705 US

The Office raised an objection on 18/08/2020 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 submitted its observations on 19/10/2020, which may be summarised as follows.

1. The mark is not descriptive, nor does it lack distinctives.

2. Similar marks have been accepted in the UKIPO and the Irish Office

3. The mark has been registered by the USPTO

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.

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).

‘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).

For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 40).

The descriptiveness of a sign can only be assessed, first, in relation to how the relevant public understands the sign and, second, in relation to the goods or services concerned (13/11/2008, T‑346/07, Easycover, EU:T:2008:496, § 42; 22/11/2018, T‑9/18, STRAIGHTFORWARD BANKING, EU:T:2018:827, § 18).

The mark is not descriptive, nor does it lack distinctives

The applicant argues that the mark is not descriptive and not does it lack distinctiveness. In particular the applicant argues that at most the mark is suggestive and fanciful of the goods. However the Office disagrees with such an interpretation. The goods in question are mounts adapted to hold computer monitors and screens.

The Office believes that the mark lacks distinctiveness, and is descriptive of the type of mounts contained in the specifications. The mounts described can support three different screens or tablet computers, these are usually used in offices and other work spaces. Contrary to the claim of the applicant, the Office believes that there is nothing fanciful in the word combination. It is simply giving clear information about the functionality of the goods, namely that the mounts can mount three different devices. The word ‘TRIO’ in relation to the goods applied for cannot be considered to be fanciful or allusive, because its descriptive. Furthermore, there is a direct nexus between the goods and the mark, therefore consumers will immediately understand that the goods applied for are meant to be used as a “trio” – as a group of three things. The consumers in the EU will understand the meaning of the mark immediately, because no extra steps are needed to understand the meaning of the word in relation to the goods.

Similar marks have been accepted in the UKIPO and the Irish Office

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).

Therefore, when assessing the case, the Office is not bound by the national decisions referred to by the applicant. Furthermore, the Office notes that the goods registered for in the cases cited are distinct from the goods applied for in the case at hand. The fact that the registrations include goods in class 9, does not make them similar to the goods at hand.

The mark has been registered by the USPTO

The applicant submits that the USPTO has registered the mark, however as the Office remarked above, this is irrelevant when considering whether a mark is registerable as an EUTM, because the EUTMR system is independent and distinct from other systems, including the US system.

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 18 252 607 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.

Alistair BUGEJA