Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/11/2020

ezwifi Engenius Technologies Europe

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PAÍSES BAJOS

Application No:	018266119
Your reference:
Trade mark:	EZ WI-FI
Mark type:	Figurative mark
Applicant:	ezwifi Engenius Technologies Europe Veldzigt 28 NL-3454PW DEMEERN PAÍSES BAJOS

The Office raised an objection on 13/07/2020 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 10/08/2020, which may be summarised as follows:

1. The application is genuine and does not seek to exploit any market monopolisation, but merely the protection of the applicant´s business.
   
   

2. Earlier trade mark registration in The United States of the trade mark ’EZWIFI’.
   
   

3. Earlier trade mark registration in the European Union of the trade mark ENGENIUS, which similarly can be referenced to in English dictionaries.

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 other than that the sign, , is devoid of any distinctive character in relation to the all the services applied for.

As stated in the Notice of grounds for refusal, the relevant English-speaking consumer would understand the sign as having the following meaning: Easy wi-fi connectivity.

As shown in the Notice of grounds of refusal, ‘EZ’ is an abbreviation used for the word ‘easy’. Ref. https://www.dictionary.com/browse/ez?s=t

‘Wi-Fi’ is a facility allowing computers, smartphones, or other devices to connect to the internet or communicate with one another wireless within a particular area.

Therfore the word elements of the sign, ‘EZ’ and ‘Wi-Fi’ would simply be perceived by the relevant consumer as a promotional laudatory slogan, the function of which is to communicate an inspirational or motivational statement. Moreover, in the present case, the relevant consumer will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in question, namely that the services applied for in class 42 (IT services) deliver an easy Wi-Fi connectivity.

Although the sign applied for contains certain figurative and stylised elements consisting of the wifi symbol (a point and three curved lines, increasing in size, placed one on top of the other) placed up the letter ‘i’ of the verbal element ‘Wi’ and the letters ‘EZ’ depicted in bold, these elements are so negligble in nature that they do not add any distinctive character to the sign applied for. As regard the wifi symbol, the does not render distinctive character to the sign, as the symbol is usually used in connection with wireless connections and therefore gives associations to wireless connections/wifi.

Therefore, the relevant consumer – regardsless of the figurative and stylised elemets, would percieve the sign as a promotional information conveyed, which merely serves to highlight positive aspects of the services in question, namely that the services applied for in Class 42 (IT services) deliver an easy Wi-Fi connectivity.

In the letter of 13/07/2020, the applicant has stated that they are willing to change the type of mark into a word mark if necessary. The Office therefore, for the sake of good order, highlight that changes such as the conversion of a figurative mark into a word mark are not possible, this can instead be done by applying for a new trade mark with the type word mark. However, please note that the word mark ‘EZWI-FI’ is probably not registrable for many goods in class 9 because of the non-distinctive character of the word combination, as detailed here above.

The same applies to the applicant’s suggestion of changing the services applied for into goods in class 9. It is always possible to limit the list of goods and services in accordance with Article 49 EUTMR. However, it is not possible to extend the list of goods and services. A change of services in class 42 to goods in class 9 is to be considered as an extension of the list of goods and services and is therefore not possible.

Further, the applicant states that an error occurred in the indication of the word element of the sign. However, the Office notes that the applicant in the application has indicated that the sign is a figurative mark. In the application the applicant has noted, in the indication of the word elements, that the word element of the mark is ‘EZWIFI’. As there is a hyphen between the two word parts ‘Wi’ and ‘Fi’, the Office has inserted this hyphen in the indication of the word elements, as the purpose of the indication of the word elements is to reproduce words in figurative marks with word elements. It should be mentioned, however, that it is not decisive for the assessment of the mark applied for whether the indication of the word element is noted as ‘EZWIFI’ or ‘EZ Wi-Fi’, as it is the figurative mark as a whole which is being assessed.

The applicant has explained that the sign applied for is not an expression of a desire for monopolisation. However, the purpose of a trade mark is to distinguish the goods and/or services of one undertaking from goods and/or services offered by other undertakings. Although the purpose of the present application is not for the sign to contribute to the monopolisation of the market, it does not change the fact that if one undertaking gets the exclusive right to ordinary non-distinctive words and/or figures, this could make it difficult for other business owners to market their goods and/or services in the usual way, which would harm competition in the market.

Thus, the sign applied for cannot be registered on the ground that it is not intended to be used for the purpose of obtaining a monopoly.

The applicant has referred to that a similar trade mark, namely ’EZWIFI’, has been registered at the USPTO in the United States. As regards this national decision, 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).

As regards the applicant’s argument that a similar registration has been accepted by the EUIPO, 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).

An individual overall assessment is therefore made of the distinctiveness of the signs applied for. In this connection, it should be mentioned that different combinations of different words can give different overall impressions and therefore also different outcomes in an assessment of the distinctiveness of signs applied for. Moreover, the assessment is always done in relation to the goods and services applied for.

Furthermore, while the terms ’EN’ and ‘GENIUS’ are both found in dictionaries, the word combination says nothing about the goods for which the mark ‘ENGENIUS’ is registered.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 266 119 is hereby rejected for all the services 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.

Zebbie GAYA