Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 04/02/2016

András Krajnyák ABK - Dr. Krajnyák & Partner Law and Patent Office

Budapest

Logodi u. 5-7.

H-1012

HUNGRÍA

Application No:	14 204 911
Your reference:	KR_2695
Trade mark:
Mark type:	Three-dimensional
Applicant:	Lighttech Lampatechnologiai Kft Dunakeszi Hegyrejaro u. 1 2120 Hungary

The Office raised an objection on 23/07/2013 pursuant to Article 7(1)(b) 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 27/11/2015, which may be summarised as follows:

1. The applicant limits the list of goods and services as follows:

Class10 Barnítólámpák, barnító készülékek, UV lámpák és barnító lámpák orvosi célokra és barnító készülékek részei.

Class 11 Barnítólámpák, barnító készülékek, UV lámpák és barnító lámpák nem orvosi célokra és barnító készülékek részei,

2. The goods are intended for a public of specialist, namely providers of solarium services, operators of solariums salons, as well as operators of beauty-, health-, sport- or other entertainment facilities.

3. The applicant argues that the unusual feature of the tanning lamp in question is the fact that the lamp is twisted or volute, therefore a spiral ornament like groove or channel runs around the lamp in a spiral form. The shape is of purely aesthetic reason since a final consumer will also be able to view the shape of the tanning lamps as the mark applied for remains visible in the solarium beds. The particular twisted shape is having an aesthetic function, thus confronted with the unusual designs that are available.

4. The applicant submits pictures of various tanning lamps available on the market. The applicant’s unique design and method of productions provides such characteristics to the lamps that it makes it stand out of a group of lamps just by its shape.

5. Creating such lamp involves a special technique developed by the applicant. The unique shape enables the relevant public to recognize the good as different and distinct from any other tanning lamps. A technical drawing of the lamps is attached.

6. The mark has a minimum degree of distinctive character. Also the CTM 955 179 has been accepted on ground of the judgement T-305/03 of the Court.

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.

1. However, the list of the goods and services has been limited; the sign is a typical shape of the remained goods. The mark presents a (type of a) tanning lamp.

2. The Office agrees with the applicant’s statement that the goods are specialised products that target professionals whose level of attention will be high. It is not disputed that, in the fields of medicine and health, what matters is the functionality of the product rather than its aesthetic appearance.

In fact, it is 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).

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 marks than for others. Consumers are not in the habit of making assumptions about the origin of products on the basis of their shape in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (judgment of 29/04/2004, joined cases C-456/01 P and C-457/01 P, ‘Tabs’, paragraphs 34 and 38; judgment of 08/04/2003, C-53/01, C-54/01 and C-55/01, ‘Linde’, paragraph 40; and judgment of 07/10/2004, C-136/02 P, ‘Torches’, paragraph 30).

In addition, it must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

It is settled case-law that, as regards three-dimensional marks, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character for the purposes of Article 7(1) (b) CTMR. By contrast, only a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision (judgment of 24/11/2004, T-393/02, ‘Henkel’, paragraph 31; and judgment of 24/05/2012, C-98/11 P, ‘Hase’, paragraph 42).

3. The applicant argues that the lamp’s appearance is unique, because of the particular shape of the lamp resulting from its spiral grooves winding round the body of the lamp. As the applicant argues, a final consumer will also be able to view the shape of the tanning lamps as the mark applied for remains visible in the solarium beds. The Office does not share this opinion. The people in the solarium bed are usually not in the situation to examine the tanning lamps in their details. On the one hand, they do not pay more attention to the lamps, on the other hand, they wear protective goggles and they usually do not open their eyes in a solarium.

Furthermore, even the tanning lamp could be considered unusual; it is not sufficient to influence the overall impression given by the sign to such an extent that it departs significantly from the norm or customs of the sector indicating a commercial origin (judgment of 15/03/2006, T-129/04, ‘Plastikflaschenform’, paragraph 53). The fact that the lamp is twisted does not add any distinctiveness, as the spiral grooves will be seen as a decorative and presentational feature. The tanning lamp, as stated above, will also be seen as a functional element, insofar as it serves to bronze or brown the skin. The body shape will not be perceived as a special feature. The relevant consumers will naturally expect a tanning lamp intended to tan the skin, even if consumers are aware that there are also different shaped lamps.

Consequently, as consumers will not consider the appearance of the goods, they are not likely to recognise or associate a particular shape of the goods with a particular undertaking.

4. The applicant submits pictures of various tanning lamps:

The main shape of the mark does not differ from the other tanning lamps; the lamps share the same elements. Furthermore, the facts that the other lamps have various elements as figurative elements, brand names, make these tanning lamps distinctive on the market.

5. The argument, that the applicant developed the shape of the lamp is irrelevant in this case. A technical development as such is not the subject of the trade mark application; a new invention can be applied for a patent. Furthermore, an appearance which is new and has an individual character can be protected as a design.

6. The applicant argues that the CTM 955 179 has been accepted. The cited mark is a word mark ACE/SERVER and was registered in Classes 9 and 16. Also the judgement T-305/03 is not relating to a three-dimensional mark.

Conclusion

In the light of the foregoing it must be found that the three-dimensional mark applied for consists of a combination of presentational features which come naturally to mind and which are typical of the goods in question. The shape in question is not markedly different from various basic shapes for the goods in question which are commonly used in trade, but is a variation of those shapes. Since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes commonly used for tanning lamps and it will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) CTMR, the application for Community trade mark No 14 204 911 is hereby rejected for all the goods claimed.

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.

Judit NÉMETH