Refusal of application for a European Union trade mark

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

Alicante, 30/05/2016

Stefano Carriero

Via Lago di Bracciano 4

I-65015 Montesilvano

ITALIA

Application No:	014975304
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Mazzeo S.r.l. Via Foggia, Km 0,500 I-71016 San Severo ITALIA

The Office raised an objection on 22/01/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) 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.

On 01/02/2016, the Office received the applicant’s request for an amendment of the list of goods in the way the final specification for the application should be read as:

Class 25: Footwear, namely shoe straps.

In its submission, the applicant noted that shoe straps are not mass consumption goods and are not aimed at average consumers, since those are only components of footwear. Apart from the aforesaid, the applicant did not submit further observations.

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.

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

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).

In the present case, the restriction of the goods did not exclude goods from the original list, as ‘shoe straps’ belong to the broad category of footwear. As it was stated in the original objection, the simple geometric shapes and commonplace figurative elements forming the purely figurative mark would most likely be perceived by the relevant consumers as a simple ornamentation, which may be placed on any parts of footwear simply for decoration purposes.

The Office cannot accept the applicant’s argument that shoe straps are not mass consumption goods and are not aimed at average consumers, since those would be seen only as components of footwear. Purchasing shoe straps is not only possible for a specialist public. Indeed, ‘shoe straps’ are widely available for the average consumers in shoe stores as well as on the internet in various forms and colours, even in a form which is to be worn for one time occasions, to keep the shoes more stable on the wearer’s feet.

However, even if the relevant public would be a specialist one, it could not 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).

In the present case, the Office maintains that taken as a whole, the mark applied for consists of a non-distinctive figurative element which the relevant public would fail to perceive immediately as an indication of the commercial origin of the goods. Consequently, the mark would not enable the relevant consumers to distinguish the goods of the applicant from competing goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

F or the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 975 304 is hereby rejected for all the goods claimed.

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.

Volker Timo MENSING