Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/12/2020

CMS CAMERON MCKENNA NABARRO OLSWANG POSNIAK I BEJM SP.K.

Emilii Plater 53

00-113 Warsaw

POLONIA

Application No:	018276905
Your reference:	NR2144.00210
Trade mark:
Mark type:	Figurative mark
Applicant:	Intel Corporation 2200 Mission College Boulevard Santa Clara, California 95052-8119 US

1. The Office raised an objection on 19/08/2020 pursuant to Article 7(1)(b) 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.

2. The applicant submitted its observations on 14/10/2020, which may be summarised as follows:

• It is submitted that the figurative mark applied for is inherently distinctive and is capable of acting as a badge of origin. The examples of refused marks provided in the Office’s Guidelines typically show one shape such as a triangle, a parallelogram or a square. There is only one invented example of two triangles of the same size that the Guidelines indicate the Office would refuse because it lacks creative arrangement.

• On the contrary, the mark applied for is not a simple geometric device like the examples in the Office’s Guidelines. Rather it is a unique configuration of two different sized squares. The creative positioning of the small square at the bottom right hand corner of a bigger square gives the effect of a single continuous line which gives the mark applied for a distinctive overall impression. This is consistent with the Office’s reasons for accepting EUTM No. 10948222 (as described in the Guidelines) which depicts two triangles formed by a single line.

• Examples are given of accepted EUTMs where the mark consists of geometric shapes (nos. 02735504, 000387498 and 000185652).

3. 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).

The Office does not find that the mark as whole possesses a sufficient degree of distinctive character.

As already pointed out in the Notice of grounds for refusal, even though the mark applied for consist of two squares, one bigger and a smaller, it lacks any creative arrangement as a whole. It is believed that the relevant consumer is unlikely to ascribe any trade mark value to such a simple representation and thus it does not function as an indicator of commercial origin.

In the absence of an additional distinctive element in the mark, such as a fanciful figurative element or a company name, it is highly doubtful if the relevant consumer would be able to perceive it as a trade mark of the applicant. Rather it would be perceived as a mere non-distinctive composition of squares.

The Office cannot detect anything “unique” or distinctive about the configuration of two different sized squares. The claimed “effect of a single continuous line” cannot easily be perceived. The mark applied for resembles more the invented example of two basic triangles next to each other (that also could be drawn in one continuous line) than the example of two overlapping triangles which gives a different optical effect.

Consumers are generally not accustomed to deriving the origin of goods or services from a simple geometric shape, or a combination thereof. A sign should have easily and directly memorable features, beyond a simple representation, so that the relevant public will be able to immediately perceive it as an indication of the commercial origin of the goods and services in question. The trade mark at hand does not contain any such visually striking or memorable elements.

Simple square shapes can often be found on a wide range of consumer goods, such as software, data carriers and electronic publications, as well as on websites where goods and services are provided. On account of its simplicity, the sign applied for is unable to convey a clear message to the public targeted.

As regards the applicant’s argument that a number of similar registrations have 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).

Moreover, the examples given such as this, , are less simplistic than the applicant´s mark and they were also filed a long time ago when the Office´s practice was more lenient in this respect.

See below a few examples of EUTM applications consisting of a combination of simple geometric shapes and that were recently refused registration due to their simplicity:

018190257 018133193 018017538

017954010

The last example of three simple blue rectangles of different width and length was appealed and the Boards of Appeal upheld the decision of the Office in case R1616/2019-1.

To summarise, there is nothing about the mark applied for, , that might enable the relevant public to memorise the sign easily and instantly as a distinctive sign for the goods and services in question.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 018276905 is hereby rejected for all the goods and services claimed, namely for:

Class 9 Computers; handheld computers; memory boards; computer hardware; integrated circuits; integrated circuit memories; integrated circuit chips; chip-sets; semiconductor processors; semiconductor processor chips; semiconductor chips; microprocessors; printed circuit boards; electronic circuit boards; computer motherboards; computer memories; computer operating systems; micro-controllers; data processors; central processing units; semiconductor memory devices; software programmable microprocessors; digital and optical microprocessors; digital and optical data and signal processors; video circuit boards; audio circuit boards; audio-video circuit boards; video graphic accelerators; multimedia accelerators; video processors; video processor circuit boards; processor die packaging and casings; cards, discs, tapes, wires, records, microchips and electronic circuits, all for the recordal and transmission of data; modems; apparatus and instruments, all for processing, storage, retrieval, transmission, display, input, output, compressing, decompressing, modifying, broadcasting and printout of data; computer input and output devices; work stations; data memories; storage devices; security systems for computer hardware and software; set electronic chips; components for computers and printed circuits; voice accelerators; voice, data, image and video accelerators; memory systems for computers; cables and adapters; computer terminals and printers for use therewith; video display units; telecommunications apparatus and instruments; cameras; computer hardware for computing; computer hardware for computing via a global and local network; computer hardware for cloud-computing; computer hardware for low-latency and high bandwidth computing; computer hardware for use in providing a secure computing environment; computer networking hardware; computer communication servers; computer hardware for use in providing a secure cloud computing network; computer software for computing; computer software for cloud computing; computer software for computing via a global and local network; computer software for low-latency and high bandwidth computing; computer memory hardware; computer software for providing a secure computing network; computer software for use in providing a secure cloud computing network; computer operating system software; computer system extensions, tools and utilities in the field of application software for connecting personal computers, networks, telecommunications apparatus and global computer network applications; computer hardware and software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of data; computer network adapters; computer network controllers; computer network interface devices; computer network hubs, switches, and routers; microcontrollers for internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing mobile internet of things (IoT) enabled mobile devices; computer hardware and software for the development, maintenance, and use of local and wide area computer networks; computer hardware and software for the development, maintenance, and use of interactive audio-video computer conference systems; computer hardware and software for the receipt, display, and use of broadcast video, audio, and digital data signals; electronic control devices for the interface and control of computers and global computer and telecommunications networks with television and cable broadcasts and equipment; routers; hubs; servers; switches; apparatus for testing and programming integrated circuits; peripheral memory apparatus and devices; semiconductor devices; computer hardware and software for creating, facilitating, and managing remote access to and communication with local area networks (lans), virtual private networks (vpn), wide area networks (wans) and global computer networks; router, switch, hub and server operating software; computer software tools for the facilitation of third party software applications; computer hardware and software for wireless network communications; downloadable electronic publications in the area of electronics, semiconductors and integrated electronic apparatus and devices, computers, telecommunications, entertainment, telephony, and wired and wireless telecommunications; computer hardware for use in machine vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms and data analysis; Computer software for machine learning, data query, and data analysis; computer software for cognitive computing, deep learning, artificial intelligence; computer software platform for cognitive computing; computer software for graphical representation of data; pattern recognition computer software; computer software for data mining; computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; computer software development kits; computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; downloadable and recorded vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; computer hardware and software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing sound, images, graphics, and data; algorithm software programs for the operation and control of computers; computer hardware and software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of audio and video graphics information; downloadable and recorded computer software for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data for use in fixed, mobile and handheld devices; electronic database featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information recorded on computer media; navigation software for calculating and displaying routes; public transit navigation system featuring interactive digital map displays, interactive instructions and user generated information; interactive social computer software for the retrieval and display of public transit, navigation, geographic, map and travel information; interactive social computer software to enable the transmission of public transit information, mapping, navigation, traffic, routes and point-of-interest information to telecommunication networks, cellular phones, navigation devices and other mobile and hand-held devices; interactive social computer software that enables the exchange of information among users; computers and computer operated systems for autonomous driving, driver-assisted, connected vehicles, unmanned aerial devices, and drones; computer hardware and software platforms featuring interactive displays, control systems, and control devices, warning systems, connectivity, onboard computers, and GPS for vehicles, connected vehicles, autonomous, and driverless vehicles; multi camera systems for use in vehicles; GPS navigation and guidance, GPS location tracking, GPS map-displaying and route-calculating device, video-recording, and wireless communication network devices for data or image transmission for vehicles; computer software applications for digital virtual agents, predictive systems, machine learning, cognitive process automation, pattern recognition, character recognition, visual computing applications, knowledge virtualisation, robotics, drones, and unmanned vehicles; computer software and hardware applications for automatic vehicle driving control; computer software and hardware applications for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles; Vehicle tracking devices comprised of computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking and vehicle monitoring.

Class 42 Providing temporary use of on-line non-downloadable software for machine learning, data mining, data query, and data analysis; providing temporary use of on-line non-downloadable software for cognitive computing, deep learning, artificial intelligence; providing temporary use of non-downloadable software for data query and data analysis; providing temporary use of non-downloadable software for data mining; providing temporary use of non-downloadable software for cognitive computing, deep learning, artificial intelligence; searching and retrieving information on computer networks for others; computer services, namely, providing temporary use of online non-downloadable software, software application programming interface (API), and software widget for machine learning, data mining, data query, and data analysis; providing online non-downloadable computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; providing online non-downloadable computer software development kits; providing online non-downloadable computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; providing online non-downloadable vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; software as a service (SAAS) services featuring software for use in providing cloud-computing capabilities and information technology (IT) services, computing, and cloud computing; software as a service (SAAS) services featuring software for use in computing via a global and local network; software as a services (SAAS) services feature software development platform for use in connecting applications to enterprise systems and devices; software consulting and providing information on software as service; software as a service (SAAS) services featuring software for use in providing low-latency and high bandwidth computing; computer software services for providing computing capabilities for application developers and content providers; cloud computing featuring software for use in providing low-latency and high bandwidth computing, information technology (IT) services, and computing via a global and local network; computer software services for providing cloud computing capabilities for application developers and content providers; services for enabling applications to be deployed across an online network; services for providing analytics, caching, computation and traffic routing; services for providing a secure and trusted computing network; providing computer hardware and software consulting services in the field developing a cloud based environment with integration of applications across various platforms and connected devices; computer services, namely, creating computer network-based indexes of information, websites, and resources; providing temporary use of non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); providing online non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); software as a service (SAAS); consulting services in the field of computers and wireless computing; computer network management services, namely, monitoring of network systems for technical purposes; hosting of digital content on the internet; computer network monitoring services, namely, providing information on the operation of computer networks; customization of web software, and computer user interface design for others; Development, design, and consulting services for computers; designing and developing standards for others in the design and implementation of computer software, computer hardware and telecommunications equipment; providing customers and technicians with information relating to computer project management; providing online software as a service for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data; providing online non-downloadable software featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information; providing online non-downloadable navigation software for calculating and displaying routes and sharing public transit navigation system, map and travel information; Providing online non-downloadable computer software to enable the sharing of public transit information, mapping, navigation, traffic, routes and point-of-interest information; interactive social computer software that enables the exchange of information among users; providing online software as a service for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles.

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.

Cecilia ALIN

Notice of grounds for refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/08/2020

CMS CAMERON MCKENNA NABARRO OLSWANG POSNIAK I BEJM SP.K.

Emilii Plater 53

00-113 Warsaw

POLONIA

Application No:	018276905
Your reference:	NR2144.00210
Trade mark:
Mark type:	Figurative mark
Applicant:	Intel Corporation 2200 Mission College Boulevard Santa Clara, California 95052-8119 ESTADOS UNIDOS

The Office has examined your application for a European Union trade mark, to ensure that it complies with the legal requirements for registration as established in Article 7 EUTMR.

The sign

The application consists of the following figurative mark:

Legal basis for the objection

Article 7(1)(b) EUTMR

The sign you have applied for is ineligible for registration under Article 7(1)(b) EUTMR, because it is devoid of any distinctive character in relation to the goods and services for which protection is sought.

Lack of distinctiveness

The goods and services to which this objection applies are:

Class 9 Computers; handheld computers; memory boards; computer hardware; integrated circuits; integrated circuit memories; integrated circuit chips; chip-sets; semiconductor processors; semiconductor processor chips; semiconductor chips; microprocessors; printed circuit boards; electronic circuit boards; computer motherboards; computer memories; computer operating systems; micro-controllers; data processors; central processing units; semiconductor memory devices; software programmable microprocessors; digital and optical microprocessors; digital and optical data and signal processors; video circuit boards; audio circuit boards; audio-video circuit boards; video graphic accelerators; multimedia accelerators; video processors; video processor circuit boards; processor die packaging and casings; cards, discs, tapes, wires, records, microchips and electronic circuits, all for the recordal and transmission of data; modems; apparatus and instruments, all for processing, storage, retrieval, transmission, display, input, output, compressing, decompressing, modifying, broadcasting and printout of data; computer input and output devices; work stations; data memories; storage devices; security systems for computer hardware and software; set electronic chips; components for computers and printed circuits; voice accelerators; voice, data, image and video accelerators; memory systems for computers; cables and adapters; computer terminals and printers for use therewith; video display units; telecommunications apparatus and instruments; cameras; computer hardware for computing; computer hardware for computing via a global and local network; computer hardware for cloud-computing; computer hardware for low-latency and high bandwidth computing; computer hardware for use in providing a secure computing environment; computer networking hardware; computer communication servers; computer hardware for use in providing a secure cloud computing network; computer software for computing; computer software for cloud computing; computer software for computing via a global and local network; computer software for low-latency and high bandwidth computing; computer memory hardware; computer software for providing a secure computing network; computer software for use in providing a secure cloud computing network; computer operating system software; computer system extensions, tools and utilities in the field of application software for connecting personal computers, networks, telecommunications apparatus and global computer network applications; computer hardware and software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of data; computer network adapters; computer network controllers; computer network interface devices; computer network hubs, switches, and routers; microcontrollers for internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing internet of things (IoT) enabled devices; downloadable computer software for connecting, operating, and managing mobile internet of things (IoT) enabled mobile devices; computer hardware and software for the development, maintenance, and use of local and wide area computer networks; computer hardware and software for the development, maintenance, and use of interactive audio-video computer conference systems; computer hardware and software for the receipt, display, and use of broadcast video, audio, and digital data signals; electronic control devices for the interface and control of computers and global computer and telecommunications networks with television and cable broadcasts and equipment; routers; hubs; servers; switches; apparatus for testing and programming integrated circuits; peripheral memory apparatus and devices; semiconductor devices; computer hardware and software for creating, facilitating, and managing remote access to and communication with local area networks (lans), virtual private networks (vpn), wide area networks (wans) and global computer networks; router, switch, hub and server operating software; computer software tools for the facilitation of third party software applications; computer hardware and software for wireless network communications; downloadable electronic publications in the area of electronics, semiconductors and integrated electronic apparatus and devices, computers, telecommunications, entertainment, telephony, and wired and wireless telecommunications; computer hardware for use in machine vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms and data analysis; Computer software for machine learning, data query, and data analysis; computer software for cognitive computing, deep learning, artificial intelligence; computer software platform for cognitive computing; computer software for graphical representation of data; pattern recognition computer software; computer software for data mining; computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; computer software development kits; computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; downloadable and recorded vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; computer hardware and software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing sound, images, graphics, and data; algorithm software programs for the operation and control of computers; computer hardware and software for enhancing and providing real-time transfer, transmission, reception, processing and digitizing of audio and video graphics information; downloadable and recorded computer software for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data for use in fixed, mobile and handheld devices; electronic database featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information recorded on computer media; navigation software for calculating and displaying routes; public transit navigation system featuring interactive digital map displays, interactive instructions and user generated information; interactive social computer software for the retrieval and display of public transit, navigation, geographic, map and travel information; interactive social computer software to enable the transmission of public transit information, mapping, navigation, traffic, routes and point-of-interest information to telecommunication networks, cellular phones, navigation devices and other mobile and hand-held devices; interactive social computer software that enables the exchange of information among users; computers and computer operated systems for autonomous driving, driver-assisted, connected vehicles, unmanned aerial devices, and drones; computer hardware and software platforms featuring interactive displays, control systems, and control devices, warning systems, connectivity, onboard computers, and GPS for vehicles, connected vehicles, autonomous, and driverless vehicles; multi camera systems for use in vehicles; GPS navigation and guidance, GPS location tracking, GPS map-displaying and route-calculating device, video-recording, and wireless communication network devices for data or image transmission for vehicles; computer software applications for digital virtual agents, predictive systems, machine learning, cognitive process automation, pattern recognition, character recognition, visual computing applications, knowledge virtualisation, robotics, drones, and unmanned vehicles; computer software and hardware applications for automatic vehicle driving control; computer software and hardware applications for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles; Vehicle tracking devices comprised of computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking and vehicle monitoring.

Class 42 Providing temporary use of on-line non-downloadable software for machine learning, data mining, data query, and data analysis; providing temporary use of on-line non-downloadable software for cognitive computing, deep learning, artificial intelligence; providing temporary use of non-downloadable software for data query and data analysis; providing temporary use of non-downloadable software for data mining; providing temporary use of non-downloadable software for cognitive computing, deep learning, artificial intelligence; searching and retrieving information on computer networks for others; computer services, namely, providing temporary use of online non-downloadable software, software application programming interface (API), and software widget for machine learning, data mining, data query, and data analysis; providing online non-downloadable computer vision software for acquiring, processing, analyzing and understanding digital images and extracting visual data; providing online non-downloadable computer software development kits; providing online non-downloadable computer software development kits for computer vision, machine learning, deep learning, artificial intelligence, natural language processing, learning algorithms, and data analysis; providing online non-downloadable vision software that uses artificial intelligence to see and interpret data, connect with hardware and store, manage and process data in the cloud; software as a service (SAAS) services featuring software for use in providing cloud-computing capabilities and information technology (IT) services, computing, and cloud computing; software as a service (SAAS) services featuring software for use in computing via a global and local network; software as a services (SAAS) services feature software development platform for use in connecting applications to enterprise systems and devices; software consulting and providing information on software as service; software as a service (SAAS) services featuring software for use in providing low-latency and high bandwidth computing; computer software services for providing computing capabilities for application developers and content providers; cloud computing featuring software for use in providing low-latency and high bandwidth computing, information technology (IT) services, and computing via a global and local network; computer software services for providing cloud computing capabilities for application developers and content providers; services for enabling applications to be deployed across an online network; services for providing analytics, caching, computation and traffic routing; services for providing a secure and trusted computing network; providing computer hardware and software consulting services in the field developing a cloud based environment with integration of applications across various platforms and connected devices; computer services, namely, creating computer network-based indexes of information, websites, and resources; providing temporary use of non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); providing online non-downloadable computer software for connecting, operating, and managing networked devices in the internet of things (IoT); software as a service (SAAS); consulting services in the field of computers and wireless computing; computer network management services, namely, monitoring of network systems for technical purposes; hosting of digital content on the internet; computer network monitoring services, namely, providing information on the operation of computer networks; customization of web software, and computer user interface design for others; Development, design, and consulting services for computers; designing and developing standards for others in the design and implementation of computer software, computer hardware and telecommunications equipment; providing customers and technicians with information relating to computer project management; providing online software as a service for the collection, compilation, processing, transmission and dissemination of Global Positioning System (GPS) data; providing online non-downloadable software featuring roadway, geographic, map, public transit lines information, public transit line information, public transit route information, public transit timetables and schedules and other public transit information; providing online non-downloadable navigation software for calculating and displaying routes and sharing public transit navigation system, map and travel information; Providing online non-downloadable computer software to enable the sharing of public transit information, mapping, navigation, traffic, routes and point-of-interest information; interactive social computer software that enables the exchange of information among users; providing online software as a service for automatic vehicle driving control, autonomous control, navigation, assisted driving of vehicles, and self-driving of vehicles.

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 figurative mark applied for, consisting of a square with a smaller square attached to it at the bottom right, would not in the minds of the relevant professional and general public, serve to distinguish the goods and services for which protection is sought as originating from a particular undertaking.

See the Office´s Guideline, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 3, point 5, Simple figurative elements:

Simple geometric devices such as circles, lines, rectangles or common pentagons are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark.

As set out by the Court, an extremely simple sign, composed of a basic geometric figure such as a circle, a line, a rectangle or a pentagon is not capable, as such, of conveying a message which the consumers can remember, with the result that they will not consider it as a trademark (see T-304/05, par. 22)

Even though the device consist of two squares, one bigger and a smaller, it lacks any creative arrangement as a whole. In the absence of an additional distinctive element in the mark, such as a fanciful logo or a company name, the relevant consumer is unlikely to ascribe to it any trade mark value and thus it does not function as an indicator of commercial origin.

Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

Deadline for a reply

If you have any observations, they should be submitted within two months of the notification of this communication. If you do not submit any observations, the application will be rejected.

Cecilia ALIN