Refusal of application for a European Union trade mark

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

Alicante, 09/11/2016

HOYNG ROKH MONEGIER SPAIN LLP

Calle Ruiz de Alarcón, 7-2º Dcha

E-28014 Madrid

ESPAÑA

Application No:	015020324
Your reference:	30592.0015.EMT0
Trade mark:	SMARTCYKLAR.SE
Mark type:	Figurative mark
Applicant:	Ellida B.V. Gyroscoopweg 6 NL-1042 AB Amsterdam PAÍSES BAJOS

The Office raised an objection on 04/12/2015 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 the reasons set out in the attached letter.

Following two requests for an extension of time totalling, four months, the applicant submitted its observations on 22/07/2016. These may be summarised as follows:

• The subject mark is made up of a complex figurative element with a particular chromatic combination which includes the word ‘SMARTCYKLAR’, and as such, it enjoys at least the minimum degree of distinctiveness.

• The term ‘SMARTCYKLAR’ is made up of elements in two different languages, English and Swedish. However, the word combination does not comply with English or Swedish rules of grammar. It is a resonant and fanciful term which would not be used in common parlance, and which will be perceived by consumers as something which goes beyond a banal descriptor.

• When assessing the distinctive character of the subject mark the examiner has referred to the goods and services in total, without providing reasoning for the objection each of the individual goods and services specified in the application.

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)(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.

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

‘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 its submissions the applicant has argued that the term ‘SMARTCYKLAR’ is made up of elements in two different languages, English and Swedish. However, the word combination does not comply with English or Swedish rules of grammar. It is a resonant and fanciful term which would not be used in common parlance, and which will be perceived by consumers as something which goes beyond a banal descriptor.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who are to look at it in relation to the goods and services for which registration is being sought, and form an opinion of what it connotes.

As regards to the applicant’s argument that term ‘SMARTCYKLAR’ is made up of elements in two different languages, English and Swedish. The Office would reiterate the point that, as stated in the initial notification, the Court has already confirmed that a basic understanding of the English language by the general public exists in the Scandinavian countries, the Netherlands and Finland (judgment of 26 November 2008 in Case T-435/07 New Look vs OHIM (NEW LOOK), not published in the ECR, paragraph 23).It is therefore likely that, in addition to seeing the term SMART as a phonetic misspelling of the Swedish word ‘smarte’, the relevant public will understand the meaning of this basic English word.

The Office is of the opinion that when taken as a whole, the meaning of the words ‘SMARTCYKLAR’ will be clear to Swedish-speaking consumers who will immediately and without any difficulty establish a direct and specific link between the mark and the objectionable goods and services for which registration is being sought, namely that, as indicated in the initial notification, they relate to the provision of bicycles/bicycle related accessories which are smart in appearance and/or which incorporate smart technology. The inclusion of the top level domain internet domain name ‘.SE’ merely serves to indicate that the goods and services at issue are available via the internet. This has been confirmed by the General Court in its judgment of 21/11/2012, T-338/11, photos.com, EU:T:2012:614, § 22, where it was stated that the element ‘.com’ is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, it may also indicate that the goods and services covered by the trade mark application can be obtained or viewed online, or are internet related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods and services concerned. It is, therefore, the Office’s view that the words ‘SMARTCYKLAR.SE’ are readily intelligible when taken in conjunction with the objectionable goods and services applied for, and viewed by the relevant consumer, who will see the words ‘SMARTCYKLAR.SE’ merely as a descriptor of characteristics of goods and services being provided rather than an indication of trade origin.

As regards the figurative elements contained in the mark, their position, the combination of colours, as well as the position and stylisation of the verbal elements, but considers these elements insufficient to endow the mark applied for, as a whole, with any distinctive character. This is because the figurative elements, namely an image of a bicycle presented in white on an orange slanted rectangular background alongside the words ‘smartcyklar.se’ written in white standard lowercase typeface and presented on a blue slanted rectangular background, are not sufficient to deflect the consumer’s attention from the descriptive meaning of the verbal elements. Simple geometrical shapes such as rectangles are commonly used as backgrounds, and will be perceived by consumers as a mere decorative embellishment. As for the colour combination used, the font, stylisation and the position of the verbal elements in the mark applied for, these are clearly insufficient to render the trade mark applied for distinctive. They do not present any striking originality which could add to the distinctive character of the mark and they cannot divert the consumer’s attention from the clear message conveyed by the descriptive term ‘smartcyklar.se’. Therefore, the combination of all the above mentioned verbal and figurative elements cannot be considered to be distinctive as a whole.

Finally, as regards to the applicant argument that the Office did not make a full assessment for all of the individual goods and services applied by giving specific reasons for each of the terms which is required according to established case-law. First of all, with regard to the obligation to state reasons, it is true that the examination of absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, that the Office must, in principle, state reasons in respect of each of those goods or services, although a general reasoning may be used where the same ground of refusal is given for a category or group of goods or services (see, to that respect, 15.02.2007, C- 239/05, The Kitchen Company, EU:C:2007:99, § 34 and 37) which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group (see order of 18.03.2010, C- 282/09 P, P@YWEB CARD and PAYWEB CARD, EU:C:2010:153, § 40). In the case in hand the contested goods listed in Class 12 are bicycles and bicycle related accessories, and the services in Class 35 are retails services related to the sale of bicycles and bicycle related accessories. As such, it is considered that these constitute sufficiently homogeneous groups that can allow for a general reasoning. The argument of the applicant must therefore be set aside.

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 15 020 324 is hereby rejected for the following goods and services:

Class 12 Apparatus of locomotion by land; bicycles, bikes; bicycle racks [carriers], including luggage racks for bicycles; baskets adapted for bicycles; panniers adapted for bicycles; bicycle bags; child seats for bicycles; pumps for bicycles; bicycle handlebar grips and bicycle brake lever grips; pedals for bicycles; bicycle bells; bicycle saddles; bicycle kickstands; bicycle fenders; bicycle anti-theft locks; water bottle holders for bicycles.

Class 35 Retail services (including online retail services) relating to bicycles, bikes and all kinds of accessories for bicycles.

The application will proceed for the remaining services, namely:

Class 36 Insurance services, including bike insurance.

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.

Andrew CARTER