Refusal of application for a European Union trade mark

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

Alicante, 02/05/2016

HGF LIMITED

1 City Walk

Leeds LS11 9DX

REINO UNIDO

Application No:	14 634 414
Your reference:	JML/T227854EP
Trade mark:
Mark type:	Figurative mark
Applicant:	Tuxera Inc. Itamerenkatu 9 FI- Helsinki FINLANDIA

The Office raised an objection on 23/10/2015 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.

The applicant submitted its observations on 23/02/2016, which may be summarised as follows:

1. The Office’s objection is not well founded; the applicant requests that the objection be waived.

2. The goods for which registration is sought are computer hardware and software goods specifically relating to wireless content delivery and digital media streaming. These goods do not fulfil basic needs and are not bought on a daily basis. Furthermore, in view of the nature of the goods concerned, in particular their price and their technological character, the average consumer will display a particularly high degree of attention when purchasing them and, for these reasons, the degree of awareness displayed by both the average and the professional consumer is likely to be high.

3. The Office’s contention that the mark applied for ‘is a simplistic depiction of the play icon alongside the stream Wi-Fi icon against a red round-cornered square background, which serves solely for decorative purposes’ is disputed; a trade mark should enable the relevant public to identify the origin of the goods or services protected and to distinguish them from those of other undertakings. In addition, according to case law, the mere combination of several descriptive elements remains essentially descriptive, with one exception, namely when, due to the unusual nature of the combination of the elements in the mark, the overall impression created would be sufficiently far removed from that produced by the mere combination of its constituent elements; this is clearly applicable in the present case.

4. The mark consists of a white triangle on its side and ‘pointing’ to the right; placed next to the triangle are three curved, distinct lines that increase in size and depth of colour as they move further away from the triangle; the outline contour of the three curved lines gives the impression of a second triangle that is ‘pointing’ to the left. The overall effect is that of a triangle and a triangle-like element of varying colour facing each other; the overall impression exhibited by these elements is particularly striking and bestows upon the mark the requisite level of distinctiveness for registration. In addition, it is imperative to acknowledge the influence of colour in the mark applied for. The triangle on the left is white and the three curved lines vary in colour from faded grey to white, and all these elements are set against a red lozenge-shaped background, which, contrary to the Office’s contention, is not ‘solely for decorative purposes’. To support this argument, the applicant refers to the decision of 08/10/2007, R 1345/2006-4 – ‘Device of a tap (fig.)’, in which it was found that the colour combination alone strongly suggested that the sign applied for was distinctive. This could be applicable in the present case: the colour combination of red, white and grey is not commonplace or functional with respect to the goods for which registration is sought, and should be, either alone or in combination with the other fanciful elements in the mark applied for, sufficient to render the mark distinctive overall. The mark is clearly more than the sum of its parts and this fact will be readily perceived by the relevant consumer, who, in the case of the specialised goods for which registration is sought, will have a high degree of attention.

5. Although the Office is not bound by its previous decisions, there must be consistency in the Office’s decisions and all applicants should be treated equally. In this respect, the applicant cited previously accepted registrations that it considers comparable to the present case, namely the following figurative signs: EUTM No 9 777 277, EUTM No 5 118 799, IR No 1 233 461, EUTM No 11 695 756, EUTM No 11 693 538, EUTM No 11 768 942, EUTM No 13 677 331 and EUTM No 14 897 151.

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.

According to Article 7(l)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered.

According to settled case law, the marks referred to in Article 7(1)(b) EUTMR are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services covered by the mark to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 29/09/2009, T‑139/08, ‘Smiley’, paragraph 14).

For a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (judgment of 08/05/2008, C‑304/06 P, ‘Eurohypo’, paragraph 66).

The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, on the basis of the perception of that sign by the relevant public (judgment of 05/03/2003, T‑194/01, ‘Soap device’, paragraph 40; judgment of 22/06/2006, C‑25/05 P, ‘Bonbonverpackung’, paragraph 25; judgment of 08/05/2008, C‑304/06 P, ‘Eurohypo’, paragraph 67).

An objection has been raised against the trade mark applied for in relation to all the goods for which registration is sought in Class 9, namely computer hardware for wireless content delivery; digital media streaming devices; wireless receivers and transmitters for portable media players; downloadable software application for personal content and media streaming, cross-platform support, multi-screen and multi-protocol media streaming, optimization and integration purposes and for allowing users to access digital content from any source and to stream digital content to any device.

The goods in question are essentially computer hardware and software goods specifically relating to wireless content delivery and digital media streaming. These goods mainly target the public at large that uses computer applications, and also professionals in the computer field. The degree of attention of the relevant public as regards most of the goods in question will be average. Nowadays, computer software related to wireless content delivery and digital media streaming is commonplace amongst owners of personal computers and other portable computer-based devices. Most of those software applications are inexpensive. In addition, such goods are used on a daily basis without a particularly high degree of attention.

The applicant argues that the goods for which registration is sought are computer hardware and software goods specifically relating to wireless content delivery and digital media streaming and that these goods do not fulfil basic needs and are not bought on a daily basis. Furthermore, the applicant argues that, in view of the nature of the goods concerned, in particular their price and their technological character, the average consumer will display a particularly high degree of attention when purchasing them and, for these reasons, the degree of awareness displayed by both the average and the professional consumer is likely to be high.

The Office does not share the applicant’s view that these goods do not fulfil basic needs and are not bought on a daily basis and that the degree of awareness displayed by both the average and the professional consumer is likely to be high.

When assessing a sign, the Office will take into account the list of goods only as it appears in the trade mark application, subject to any amendments thereto (judgment of 13/04/2005, T‑286/03, ‘Right Guard Xtreme Sport’, paragraph 33). In the present case, the goods for which registration is sought are, inter alia, downloadable software applications that allow users to access digital content from any source and to stream digital content to any device. As mentioned above, these goods are inexpensive and used on a daily basis.

On the other hand, the degree of attention may be enhanced in relation to computer hardware for wireless content delivery; digital media streaming devices; wireless receivers and transmitters for portable media players in Class 9 given their technical nature. Such goods are not bought on a daily basis and may be rather expensive.

However, even assuming that the degree of attention of the relevant consumer would be high, this fact alone cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. It does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist, whose attention is high (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48). It follows that a high degree of attention and awareness on the part of the relevant public cannot automatically lead to a finding of distinctiveness of a mark. In the present case, the applicant does not clarify why the features of the mark would be more memorable for the consumer of its products with a high degree of attention. In the absence of such arguments, this claim must be rejected.

The applicant disputes the Office’s contention that the mark applied for ‘is a simplistic depiction of the play icon alongside the stream Wi-Fi icon against a red round-cornered square background, which serves solely for decorative purposes’ and argues that a trade mark should enable the relevant public to identify the origin of the goods or services protected and to distinguish them from those of other undertakings.

As the trade mark applied for is a purely figurative mark without any word elements, the public throughout the European Union is to be considered when assessing the absolute ground for refusal under Article 7(1)(b) EUTMR.

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that Article (judgment of 27/02/2002, T‑79/00, ‘Lite’, paragraph 28; judgment of 15/09/2005, T‑320/03, ‘Live richly’, paragraph 68).

The assessment of the distinctiveness of a mark must be based on the overall impression conveyed by the mark, but nothing prevents an examination of each of the mark’s individual elements separately (judgment of 09/12/2010, T‑282/09, ‘Carré convexe vert’, paragraph 18). Furthermore, the assessment of the mark’s distinctiveness must be based only on the sign’s depiction as filed and, where applicable, on the description included in that trade mark application (see, by analogy, judgment of 30/11/2005, T‑12/04, ‘Limonadenflasche’, paragraph 42).

The figurative trade mark applied for is a simple depiction of the play icon alongside the stream/Wi-Fi icon against a red round-cornered square background, which serves solely decorative purposes.

The applicant argues that the mark applied for comprises a white triangle on its side and ‘pointing’ to the right; placed next to the triangle are three curved, distinct lines that increase in size and depth of colour as they move further away from the triangle; the outline contour of the three curved lines gives the impression of a second triangle that is ‘pointing’ to the left. The overall effect is that of a triangle and a triangle-like element of varying colour facing each other. In addition, the applicant argues that it is imperative to acknowledge the influence of colour in the mark applied for. The triangle on the left is white and the three curved lines vary in colour from faded grey to white, and all these elements are set against a red lozenge-shaped background, which, contrary to the Office’s contention, is not ‘solely for decorative purposes’. Consequently, in the applicant’s opinion, the overall impression exhibited by these elements is particularly striking and bestows upon the mark the requisite level of distinctiveness to fulfil its essential function as an indication of commercial origin.

In the Office’s opinion, the red background is insufficient to make the mark identifiable and memorable. In addition, the Office fails to see how the colour combination alone could suggest that the sign applied for is distinctive and could enable the relevant public to distinguish between the applicant’s goods and those of different undertakings.

Even if the Office were to assume that the mark is a simple and elegant design, this is not sufficient to endow the sign with the minimum degree of distinctive character required. Consequently, the sign is no more than a symbol representing the goods themselves or their function, namely devices and software applications related to digital media streaming or wireless content delivery, and it will be seen as an image of rather ordinary play and stream/Wi-Fi icons and not as an indicator of commercial origin.

Furthermore, whether the sign applied for or similar devices are currently used on the market or whether they were used before the filing date of the sign at issue is not a decisive factor in the assessment of likelihood of confusion. In addition, even if there had never been any use of similar devices/signs/symbols, it is still reasonable to assume that the public would perceive elements in the mark as mere symbols representing the goods for which registration is sought or their features and not as a badge of commercial origin. This is sufficient to confirm that the requirements of Article 7(1)(b) EUTMR are met. The lack of prior use cannot automatically indicate that the sign bears a distinctive character (judgment of 15/09/2005, T‑320/03, ‘Live richly’, paragraph 88).

The applicant refers to previous registrations by the EUIPO, which, in its opinion, are very similar to the one under examination. In this regard, it must be held that, while the Office strives for consistency in the treatment of comparable cases, as it is governed by the principle of legal certainty, that principle does not confer an acquired right to consistency of case law. Case law development is not, in itself, contrary to the proper administration of justice, since a failure to maintain a dynamic and developing approach would risk hindering reform or improvement.

In addition, it must be reiterated that ‘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).

In addition, it should be recalled that 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 legality of those decisions must be assessed solely on the basis of the EUTMR and not on the basis of the Office’s previous decision-making practice (judgment of 08/07/2010, T‑386/08, ‘Pferd’, paragraph 48). The observance of the principle of equal treatment must be reconciled with the observance, specifically, of the principle of legality. According to the latter principle, no person may rely, in support of his/her claim, on an unlawful act committed in favour of another (judgment of 10/03/2011, C‑51/10 P, ‘1000’ paragraphs 73‑78).

In the EUIPO’s view, the marks cited by the applicant are registered for services or goods that are not related to those for which registration is sought, and some of these marks have word elements or other features that give them the minimum degree of distinctive character required to function as a trade mark. Therefore, the previous marks referred to by the applicant cannot alter the conclusion that, under the current Office practice, the sign at issue comes short of meeting the Article 7(1)(b) EUTMR criteria for registrability.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, European Union trade mark application No 14 634 414 is hereby rejected for all the goods for which registration is sought.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Roxana PISLARU