Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 17/05/2016

TAYLOR WESSING LLP

5 New Street Square

London EC4A 3TW

REINO UNIDO

Application No:	014425003
Your reference:	ORA11.U13
Trade mark:	Orange
Mark type:	Figurative mark
Applicant:	Orange Brand Services Limited 3 More London Riverside London SE1 2AQ REINO UNIDO

The Office raised a partial objection on 12/11/2015, pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, because it found that the trade mark applied for is descriptive and devoid of any distinctive character for some of the goods for which registration is sought, for the reasons set out in the attached letter.

After an agreed extension of time, the applicant submitted its observations on 14/03/2016, which may be summarised as follows:

1. The mark applied for, , is a figurative mark comprising several distinctive elements, namely the word ‘Orange’ in a particular, stylised orange font on a white background with ‘O’ in upper case. The examination did not take the sign as whole into account but instead examined it as a word mark.

The overall impression of the sign applied for creates a perceptible difference between the word ‘orange’ and the sum of the sign’s parts. The combination possesses a minimum degree of distinctive character.

2. There is no sufficiently direct or specific link between the sign applied for and the goods for which registration is sought. At the very most, the sign only indirectly suggests or evokes that the goods may be the colour orange. Furthermore, the relevant public would not perceive such a colour as having a significant impact on an essential characteristic of the goods because the goods to which an objection has been raised are traditionally supplied in neutral colours (silver, white or black), as can be seen from the internet extracts submitted (applicant’s Annexes 1A to 1C).

3. Other traders are not likely to use the sign applied for as a whole to describe their goods. As is evident from the internet evidence provided by the Office, a limited number of products are available in the colour orange, and they only show use of the word ‘orange’. Those examples do not demonstrate that the colour orange is likely to be perceived as being an essential characteristic of the goods. Indeed, an internet search for the phrase ‘orange phone’ provides hits that all relate to the applicant and its goods and services (applicant’s Annex 2).

4. The ‘Orange’ brand has already and repeatedly been registered by the Office for similar or identical goods and services on at least 14 occasions (applicant’s annex 3). Pursuant to the principles of legal certainty, equal treatment and sound of administration, the current application must be consistent with the previous 14 registrations.

Pursuant to Article 75 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.

1. Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications 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.

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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

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 (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31).

It is settled case law that since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

The Office followed Court practice when examining the sign applied for. The Office took into account all the figurative elements noted by the applicant together with the meaning of the word ‘orange’ and came to the conclusion that the combination of these elements does not take the sign as a whole beyond a minimum degree of distinctive character that overcomes the descriptive meaning conveyed by the word ‘orange’.

Although it is not within the Office’s remit to assess either the creativity inherent in a trade mark or its imaginative or striking appearance, the following practice should be taken into account.

A sign containing both descriptive and non-descriptive elements can be refused registration if the non-descriptive elements are not able to divert the attention of the relevant public from the descriptive message conveyed by the descriptive elements (judgment of 28/06/2011, T‑487/09, ‘ReValue’, paragraphs 38 and 39).

The typeface used for the word ‘orange’ is a basic or standard one without any elements that have sufficient impact to render it distinctive; the use of coloured fonts with an upper case first letter is commonly used in the market. Similarly, the mere addition (or the absence) of a colour as a background is not sufficient to give the mark distinctive character. The orange lettering will not affect the meaning of the verbal element; moreover, in this particular case it will be reinforced as both will be linked with the same concept, the orange colour (by analogy, judgment of 03/07/2003, T‑122/01, ‘Best Buy’, paragraphs 33-37).

2. ‘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’ (judgment of 26/11/2003, T‑222/02, ‘Robotunits’, paragraph 34).

In relation to the essential character of the elements described, the Office maintains that the sign applied for describes the external appearance of the goods to which an objection has been raised. Taking into account the importance that relevant consumers give to the aesthetics of electronic devices, it is feasible to assume that the colour of those devices constitutes an essential characteristic that may have an important influence in the decision about whether or not to purchase the device.

The applicant argued that the goods to which an objection has been raised are commonly manufactured and offered in neutral colours, such as black, white and silver; however, as is evident from the internet results provided on 12/11/2015, the possibility that goods of the kind to which an objection has been raised are manufactured and offered in other colours, specifically in orange, clearly exists.

The internet examples submitted do not constitute the basis of the objection, pursuant to Article 7 EUTMR. However, contrary to the applicant’s opinion, those examples are relevant to the extent that they show the goods for which registration is sought being described and offered in the colour orange. The Office does not see why market operators would describe and offer their products in the colour orange if it was of no relevance for consumers and their business.

3. As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that the application of Article 7(1)(c) EUTMR does not depend on there being a real, current or serious need to leave a sign or indication free (judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 39).

As mentioned in the previous section, the internet references provided do not constitute the basis of the objection under Article 7 EUTMR; they are examples of the relevance of the external appearance of the goods for which registration is sought.

The applicant argues that its marks are very well known by the public and that the sign applied for is only a slight variation of those already registered by them. However, the applicant did not claim the implementation of Article 7(3) EUTMR and the evidence included in Annex 2 only shows the use of the sign in relation to telecommunications services, which are not the same as the goods to which an objection has been raised.

4. As regards the applicant’s argument that a number of similar registrations, of which it is already the proprietor, have been accepted by 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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 67).

This has been confirmed in recent case law:

It must be recalled that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. Having regard to those two principles, EUIPO must, when examining an application for registration of a European Union trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

(Judgment of 21/05/2015, T‑203/14, ‘Splendid’, paragraphs 47‑60, emphasis added.)

Like the previous registered EUTMs, the sign applied for was subject to the rigorous examination required under the EUTMR according to its own merits. Those merits might have been different at the time of filing. Following the judgment of 06/03/2003, T‑128/01, ‘Grille’, paragraph 46, the previously registered trade marks could have enjoyed, at the time of filing, an unusual character that the mark applied for, due to the evolution of the market and/or perception of the relevant public, will not enjoy.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 425 003, , is hereby rejected for the following goods:

Class 9 Electrical and electronic communications and telecommunications apparatus and instruments; communications and telecommunications apparatus and instruments; electrical and electronic apparatus and instruments all for processing, logging, storing, transmission, retrieval or reception of data; apparatus and instruments for recording, transmission, amplifying or reproduction of sound, images, information or encoded data; computer hardware; image processing apparatus, instruments and equipment; cameras; photographic apparatus, instruments and equipment; video projectors; multimedia projectors; television and radio apparatus and instruments; computers; peripheral equipment for computers; magnetic, digital and optical data carriers; magnetic, digital and optical data recording and storage media (blank and pre-recorded); USB flash drives; devices for playing downloadable music files; portable media players; multimedia terminals; telephones, mobile telephones and telephone handsets; personal digital assistants (PDAs); electronic notepads; electronic notebooks; electronic tablets; mobile electronic devices that enable the user to keep track of or manage personal information; accessories for telephones and telephone handsets; adapters for use with telephones; battery chargers for use with telephones; desk or car mounted units incorporating a loudspeaker to allow a telephone handset to be used hands-free; in-car telephone handset cradles; headphones; hands free devices for telephone handsets and other mobile electronic devices; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; cell phone straps; computerised personal organisers; key boards; radio apparatus and instruments; audio-visual apparatus and equipment; electrical and electronic accessories and peripheral equipment designed and adapted for use with computers and audiovisual apparatus; parts and fittings for all the aforesaid goods.

The application is accepted for the remaining goods and services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Octavio MONGE GONZALVO