Refusal of application for a European Union trade mark

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

Alicante, 01/09/2016

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	15 034 416
Your reference:	T306714JBP
Trade mark:
Mark type:	Figurative mark
Applicant:	Exxon Mobil Corporation 5959 Las Colinas Boulevard Irving, Texas 75039-2298 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/02/2016 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 10/05/2016, which may be summarised as follows:

1. The Office has erred by not conducting a global assessment of the trade mark. The Office’s assessment is based on depictions of black and white chequerboard patterns other than the mark in question found online, without any further assessment. The images found by the Office provide no context whatsoever for the objections raised.

2. Regardless of the fact that the Office’s arguments are considered unfounded on the basis of the points set out below, it is not reasonable for the Office to simply adopt the position that, because other graphic depictions exist in the public arena (irrespective of their area of commercial interest), the vehicle-related services in Class 37 should be considered open to objection. In addition, no assessment was conducted of whether the images found were from EU sources or not, or if they were in some way used in connection with the services in Class 37 for which registration is sought.

3. The trade mark applied for is not wholly devoid of distinctive character and, while consisting of a 3D black and white chequerboard pattern, it does in fact meet the requisite level of distinctiveness to avoid an objection under Article 7(1)(b) EUTMR. The mark is depicted with a ‘wave’ effect to the pattern, with some sections darkened to depict shadows. The mark therefore exhibits a certain degree of originality and resonance, which makes it easy to remember in relation to the specific services in Class 37 in the present case.

4. The Office has incorrectly assessed the mark by providing unsubstantiated evidence of existing use of other graphic patterns, as well as by not considering the relevant consumers’ perception of the mark in relation to the particular services in Class 37 for which registration is sought.

5. The applicant agrees with the Office’s finding that the services for which registration is sought are specialised services that target both professionals and average consumers. Furthermore, because the relevant consumer would in most cases pay a high degree of attention when selecting these types of services, they would take note of the actual depiction of the mark and would be aware of the particular form that this 3D mark takes in order to verify the origin of the services.

6. The applicant refers to the decisions of 07/08/2012, R 103/2012-2, PASSION FOR PEOPLE; 07/02/2012, R 1264/2011-2, DEFINING TOMORROW, TODAY; and 17/06/2013, R 9/2013-2, IMPOSSIBLE BECOMES POSSIBLE, arguing that, while the case law cited concerns word marks, these cases are still relevant to cases of figurative or 3D shape marks where the distinctive character is being assessed.

7. Pursuant to the cited case law, the trade mark is, at best, allusive in relation to the services for which registration is sought. The mark may be seen by some as a flag – despite not containing additional components such as a flag pole, eyelets or a halyard – and, in particular, as a ‘chequered flag’, which is used to signify the end of a motorsports race and determines the race winner. Even if this notion is grasped by the relevant consumer, this does not mean that the chequered flag would make them directly associate it with ‘vehicle service stations’ or ‘vehicle lubrication’ and the mark is, therefore, distinctive for the services to which an objection has been raised.

8. The applicant has used the trade mark in the EU for over 30 years. The mark was first used in Finland in 1984 and has been used in Germany since 2006, and, at present, there are 37 service stations in Finland that use the mark. The applicant submitted a picture of the mark being used in Finland, arguing that the logo is clearly and prominently displayed on the applicant’s business premises and that the logo is clearly positioned separately from the applicant’s business name. In addition, the long-standing use of the mark shows that it has a sufficient degree of distinctive character to be recognised as indicating trade origin, which should be persuasive for the Office.

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 signs referred to in Article 7(1)(b) EUTMR are, in particular, 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 them 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 (29/09/2009, T 139/08, Smiley, EU:T:2009:364, § 14 and case-law cited therein).

A minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) EUTMR inapplicable (29/09/2009, T 139/08, Smiley, EU:T:2009:364, § 16 and case-law cited therein).

It is established case-law that the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. In that regard, it is also established case-law that the notion of general interest underlying Article 7(1)(b) EUTMR is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end user by enabling him/her, without any possibility of confusion, to distinguish the product or service from others which have another origin (08/05/2008, C 304/06 P, Eurohypo, EU:C:2008:261, § 56).

The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration or the protection of the mark has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of those goods or services (29/09/2009, T 139/08, Smiley, EU:T:2009:364, § 15 and case-law cited therein; 13/04/2011, T 159/10, Parallélogramme, EU:T:2011:176, § 14). The average consumer is deemed to be reasonably well informed, observant and circumspect, and its level of attention may vary, according to the category of goods or services concerned.

The application covers the following services in Class 37: vehicle service stations and vehicle lubrication. The applicant did not contest the Office’s finding that those services are specialised services that target both professionals and average consumers.

With respect to the services for which registration is sought, the relevant consumer’s degree of attention may vary from average to high. However, a higher degree of attention does not necessarily mean that consumers would perceive a non-distinctive sign as a trade mark.

In accordance with settled case law, the assessment of the distinctiveness of a sign must be based on the overall impression produced by the sign applied for, which is not incompatible with an examination of each of the individual features in turn (28/01/2004, T‑146/02 - T‑153/02, Standbeutel, EU:T:2004:27, § 45).

According to well-established case law, a sign that is excessively simple and is made up of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message that consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (12/09/2007, T‑304/05, Pentagon, EU:T:2007:271, § 22 and 33).

However, an objection under Article 7(1)(b) EUTMR is not limited to trade marks that consist of basic geometric figures, but applies to all sorts of ‘extremely simple’ shapes (13/04/2011, T‑159/10, Parallélogramme, EU:T:2011:176, § 30), and also to other more complex signs that have been found to be unable to distinguish the commercial origin of the goods or services of one undertaking from those that have another commercial origin (09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 26, confirmed by 28/06/2004, C‑445/02 P, Glass pattern, EU:C:2004:393, § 33).

Therefore, the relevant test for assessing the distinctive character of a sign is whether or not the sign is inherently capable of being committed to memory as a trade mark by the consumers concerned, when used with the goods or services at issue (28/06/2004, C‑445/02 P, Glass pattern, EU:C:2004:393, § 33).

To assess the overall impression of the sign in question, its features should first be analysed one by one.

The features of the shape of the mark applied for, taken alone or combined with each other, are not distinctive: the graphic depiction is a basic and commonplace figurative pattern composed of a regular succession of squares of the same size that are differentiated by alternating colour, black and white. Neither the shape of each individual square nor the way the shapes are combined is an immediately noticeable feature that could catch the relevant consumer’s attention and cause the consumer to perceive the sign as distinctive.

The applicant disagrees with the Office’s submission and argues that, the trade mark applied for is not wholly devoid of distinctive character and, while consisting of a 3D black and white chequerboard pattern, it does in fact meet the requisite level of distinctiveness to avoid an objection under Article 7(1)(b) EUTMR. In addition, the applicant argues that the sign applied for is depicted with a ‘wave’ effect to the pattern, with some sections darkened to depict shadows, and, therefore, the mark exhibits a certain degree of originality and resonance, which makes it easy to remember in relation to the services in Class 37 for which registration is sought.

The Office partially agrees with the abovementioned arguments of the applicant. The applicant claims that the sign applied for consists of a 3D black and white chequerboard pattern. A chequerboard is a board with a chequered pattern that consists of 64 squares (8×8) of alternating dark and light colour, often black and white. In addition, the adjective ‘chequered’ refers to something that is ‘patterned with alternating squares of color’ (information extracted on 01/09/2016 at https://www.vocabulary.com/dictionary/chequered ). Such a pattern can be found in many contexts, such as the chequered flag used to signify the end of a vehicle race. In the notice of grounds for refusal, the Office provided the results of an internet search conducted for the figurative pattern used in the relevant market.

It is irrelevant that the chequered pattern is in 3D and depicted with a ‘wave’ effect, with some sections darkened to depict shadows. The sign in question does not differ from the norm or customs for a chequered pattern, the combination is only a simple variant thereof and, moreover, it is not unusual to use a chequered flag in relation to service stations. In the Office’s view, the sign applied for does not depart from the basic decorative elements normally used on the market concerned. In addition, such a pattern does not convey any ‘message’ that could make the sign easily memorable for consumers.

The applicant argues that, because the relevant consumer would in most cases pay a high degree of attention when selecting these types of services, they would take note of the actual depiction of the mark and be aware of the particular form that this 3D mark takes in order to verify the origin of the services.

The Office does not agree with the applicant’s argument above. It should be reiterated that, in view of the nature of some of the services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

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 (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The applicant argues that its sign is not commonly used in the market, is unique and has the minimum degree of distinctive character required to enable it to function as a trade mark. However, uniqueness is not equal to distinctiveness. As established by the General Court, novelty and originality are not relevant criteria in the assessment of the distinctive character of a mark (14/05/2012, C‑453/11 P, Uhr, EU:C:2012:291, § 19). Therefore, the fact that the outline of the applicant’s mark could be ‘unique per se’ is insufficient as such. Besides, as already stressed, the sign applied for constitutes, overall, a chequered patterned figurative element comprising a regular succession of squares of the same size that are differentiated by alternating colour, black and white, and is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services in question. Therefore, the applicant’s sign lacks the minimum degree of distinctive character required within the meaning of Article 7(1)(b) EUTMR.

The applicant contends that the Office has erred by not conducting a global assessment of the trade mark, that its assessment is based on depictions of black and white chequerboard patterns other than the mark in question found online, without any further consideration and that the images found by the Office provide no context whatsoever for the objections raised. In addition, the applicant claims that the Office’s arguments are unfounded and that it is not reasonable to simply adopt the position that, because other graphic depictions exist in the public arena (irrespective of their area of commercial interest), the vehicle-related services in Class 37 should be considered open to objection. Moreover, the applicant argues that no assessment was conducted on whether the images found were from EU sources or not, or if they were in some way used in connection with the services in Class 37 for which registration is sought.

Where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

As regards the applicant’s argument that the assessment conducted by the Office did not include any information on whether the images found were from EU sources or not, or if they were in some way used in connection with the services for which registration is sought in Class 37, it should be pointed out that, because the services in question are specialised services, it is irrelevant whether the internet hits come from EU sources or not. The only question to be raised is how the relevant consumers would perceive the sign applied for in relation to the services for which registration is sought.

The applicant argues that it has used the trade mark in the EU for over 30 years, for the first time in Finland in 1984 and since 2006 in Germany and, at present, there are 37 service stations in Finland that use the mark.

Despite the picture submitted by the applicant showing the use of the mark in Finland, the applicant failed to prove that European consumers have sufficient information and knowledge to recognise the chequered patterned figurative element as belonging to the applicant. Even though the logo displayed on the applicant’s business premises is positioned separately from its business name, the Office fails to see how this image and this argument are able to add distinctiveness to the sign applied for. At best, the consumers will recognise the sign and will associate it with the applicant, but only when used in combination with its business name. The sign applied for will not be memorised and will not, prima facie, enable the relevant consumer to recognise it as a trade mark designating the origin of the services in question.

The applicant refers to the decisions of 07/08/2012, R 103/2012-2, PASSION FOR PEOPLE; 07/02/2012, R 1264/2011-2, DEFINING TOMORROW, TODAY; and 17/06/2013, R 9/2013-2, IMPOSSIBLE BECOMES POSSIBLE, arguing that, while the case law cited concerns word marks, these cases are still relevant to cases of figurative or 3D shape marks where the distinctive character is being assessed.

Since the case law relied upon by the applicant refers to slogans, the Office strongly believes that those cases do not support the argument that the chequered patterned figurative element applied for should be considered distinctive for the services at issue in the present case.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for figurative European Union trade mark No 15 034 416 is hereby rejected for all the services 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.

Roxana PÎSLARU