OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Refusal of application for a Community trade mark
(Article 7 CTMR and Rule 11(3) CTMIR)
Endurance House, Vision Park, Chivers Way
Cambridge CB24 9ZR
Celerity Systems (Pty) Ltd
125 Buitengracht Street
Cape Town, Western Cape 8001
ÁFRICA DEL SUR
The Office raised an objection on 22/05/2015 pursuant to Article 7(1)(b) and 7(2) CTMR 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 28/09/2015, which may be summarised as follows:
The mark applied for clearly has ‘some’ distinctive character which is enough for the mark to be registered. The mark is highly stylised, unique and individual. The thick orange outline, grey parallelogram shaped border and envelope shape are all striking, to create an eye catching impression and give feeling of 3D shape. These features mean that the mark differs from the norm. Reference to numerous images of envelopes made by the examiner only illustrates the deference between the envelope devices which the public are used to seeing and which are common in the market, and the mark applied for.
The consumer’s level of attention is very high when purchasing computer goods and the same applies to the goods at issue, for example, a mobile phone.
The mark is made up of a number of unique elements, which produces a distinctive visual impression for the relevant consumer. The mark is clearly able to function as an indicator of origin of the goods and services in question, for example, ‘recorded computer software’ in Class 9 and ‘telecommunications’ in Class 38.
Objecting to the registration of this mark would mean that no envelope device could function as a trade mark in relation to any telecommunication services. This mark should not be objected to simply because other envelope devices are used to denote the delivery of email transmissions. Devices of houses can function as trade marks for estate agents.
In conclusion, it is apparent that the mark would be considered to be distinctive by the relevant consumer for the goods and services in question since it is unique and highly stylised, and would not be considered to be commonplace within the relevant market.
Pursuant to Article 75 CTMR, 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) CTMR, ‘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) CTMR 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 (judgment of 16/09/2004, C-329/02 P, ‘SAT.1’, paragraph 25).
It is also settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (judgment of 09/10/2002, T-360/00, ‘UltraPlus’, paragraph 43).
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 (judgment of 29/04/2004, joined cases C-456/01 P and C-457/01 P, ‘Henkel’, paragraph 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 (judgment of 05/03/2003, T-194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T-305/02, ‘Forme d’une bouteille’, paragraph 34).
The applicant argues that the mark is unique and highly stylised, and therefore it is different from the common shape of envelope and has a minimum degree of distinctive character for registration. However, taking careful consideration of all features of the mark provided by the applicant, the Office is still of the view that the mark applied for is not distinctive enough to be registered as a trade mark. It is simply considered to be a common representation of envelope designating email or message services in relation to telecommunication devices as stated in the Office letter of 22/05/2015.
With respect to the argument that the consumer’s level of attention is very high in relation to computer goods, although it is true that the consumer’s level of attention is higher in relation to some goods than others, it does not automatically mean that a weaker distinctive character of a sign will become sufficiently strong enough to make the sign function as a trade mark. The mark in the present case cannot be perceived as a sign that distinguishes the applicant’s goods and services from those of its competitors because the relevant consumer will see it as a simple icon of an envelope informing the user of an email or message, when viewed in relation to the goods and services in question.
The applicant argues that objecting to the registration of this mark means that no envelope device could function as a trade mark in relation to any telecommunication services. In that regard, it should be said that the registrability of a trade mark must be based on the mark which is actually applied for registration, and therefore the applicant’s argument is irrelevant.
Despite the applicant’s arguments, the Office remains of the opinion the mark is not capable of attracting the attention of the consumer for the relevant public in relation to the objected goods and services. Indeed, in the absence of any particular characteristic or other distinctive features, the consumer would merely dismiss the features of the mark as banal decorative elements and would not attribute trade mark significance to them. The mark applied for per se will not trigger a visual stimulus permitting the consumer to recognize the origin of those goods and services objected to.
For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 13 909 312 is hereby rejected for the following goods and services:
Class 9 Apparatus for transmission of sounds or images; recorded computer software.
Class 38 Telecommunications; Telecommunication and communication services including but not limited to cellular telephone communication services; electronic and/or digital transmission of messages, images, voice, data and sound, electronic mail services; Telephone and mobile telephone services; Telephone communication services; Data transmission; Data transmission services; Audio-visual transmission services; Electronic transmission of data; Transmission of messages; Cellular telephone communication; Computer transmission services; Video transmission services; Sound transmission services; Services relating to the provision of access to computer programs and databases; Information, advisory and consultancy services relating to all the aforesaid services.
The application is accepted for the remaining goods and services.
According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.
Tel. +34 96 513 9100 • Fax +34 96 513 1344