Refusal of application for a European Union trade mark

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

Alicante, 28/04/2017

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

REINO UNIDO

Application No:	015066021
Your reference:	T176193EM01AHJMK
Trade mark:	GUITARGUITAR
Mark type:	Word mark
Applicant:	Guitar Guitar Limited 36 Trongate Glasgow G1 5ES REINO UNIDO

The Office raised objections on 21/03/2016, 27/10/2016 and 09/02/2017 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 letters.

The applicant submitted its latest observations on 10/04/2017, which may be summarised as follows:

1. In order to overcome the absolute grounds objection several limitations have been suggested, by introducing the limitation ‘…other than for guitars’, ‘…other than guitars’ and ‘…other than about guitars’ to several of the objected terms.

2. Terms where such a limitation does not make sense the terms must be accepted as applied for.

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In response to the applicant’s submissions, the Office states the following:

1.

The suggested limitations are inadmissible according to the principles of the Postkantoor judgment, for example for ‘foot controllers other than for guitars’ and ‘orchestra instruments other than guitars’ because they are negative formulations which does not reveal which types of instruments are still positively claimed. It is clear from case-law and practice that a specification of goods or services that is restricted by a condition that the goods or services do not possess a particular characteristic will in general not overcome an absolute grounds objection (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 114).

2.

For the reasons set out in our previous attached letters (of 21/03/2016, 27/10/2016 and 09/02/2017) the objection to the unchanged terms are maintained.

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 15 066 021 is hereby rejected for the following goods and services:

Class 9 Amplifiers; Guitar amplifiers; electric amplifiers; acoustic amplifiers; bass amplifiers; transportable guitar amplifiers; pick-ups for guitars; electronic pick-ups; acoustic pick-ups; bass pick-ups; electronic tuners; electronic pitchclips; foot controllers; foot switches; foot pedals; special effect pedals; wah-wah pedals; pedal boards; audio devices; downloadable electronic publications; parts and fittings for all of the aforementioned goods.

Class 15 Musical instruments; electric musical instruments; string instruments; guitars; electric guitars; acoustic guitars; bass guitars; banjos; mandolins; ukuleles; strings for musical instruments; guitar strings; capos; plectra; guitar picks; flatpicks; fingerpicks; guitar slides; tone bars; guitar saddles; guitar straps; guitar shoulder straps; guitar tuning cranks; peg winders; string winders; guitar toggle switch tips; tuners; pitch clips; stands adapted for musical instruments; stands adapted for guitars; bags and cases specially adapted for holding musical instruments; bags and cases specially adapted for holding guitars; music stands; parts and fittings for all of the aforementioned goods.

Class 16 Printed publications; printed matter; books; instructional and teaching materials; newspapers; magazines; periodicals; sheet music; printed music books; music sheets; song books; photographs; posters; stickers.

Class 35 Retail services connected with the sale of amplifiers, guitar amplifiers, electric amplifiers, acoustic amplifiers, bass amplifiers, transportable guitar amplifiers, pick-ups for guitars, electronic pick-ups, acoustic pickups, bass pick ups, electronic tuners, electronic pitchclips, foot controllers, foot switches, foot pedals, special effect pedals, wah-wah pedals, pedal boards, audio devices, downloadable electronic publications, musical instruments, electric musical instruments, string instruments, guitars, electric guitars, acoustic guitars, bass guitars, banjos, mandolins, ukuleles, strings for musical instruments, guitar strings, capos, plectra, guitar picks, flatpicks, fingerpicks, guitar slides, tone bars, guitar saddles, guitar straps, guitar shoulder straps, guitar tuning cranks, peg winders, string winders, guitar toggle switch tips, tuners, pitch clips, stands adapted for musical instruments, stands adapted for guitars, bags and cases specially adapted for holding musical instruments, bags and cases specially adapted for holding guitars, music stands, printed publications, printed matter, books, instructional and teaching materials, newspapers, magazines, periodicals, sheet music, printed music books, music sheets, song books, photographs, posters, stickers.

Class 37 Repair, maintenance, refurbishment and restoration of musical instruments; musical instrument tuning services; information, advisory and consultancy services relating to all of the aforementioned services.

Class 41 Education; providing of training; instruction in music; tuition in music; Instruction in recording and producing sound and music; tuition in recording and producing sound and music; entertainment; music entertainment services; music recording services; music publishing services; musical performances; music festival services; music concert services; cultural activities; sporting activities; information, advisory and consultancy services relating to all of the aforementioned services.

The application may proceed for the following goods and services (including the limitations accepted in the L110 letter of 09/02/2017):

Class 09 Apparatus for recording, transmission or reproduction of sound or Images; audio and video recording and reproducing apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; amplifier tuners; amplifier valves; valve testers; power supplies; power attenuators; drum monitors; cables; audiovisual equipment; radio receivers; audio interfaces; computer interfaces; controller keyboards; sound samplers; microphones; microphone stands; microphone booms; headphones; speakers; monitors; audio speakers; monitor speakers; sub woofers; signal processors; mixing desks; turntables; CD desks; magnetic data carriers; recording discs; recording media; downloadable sound recordings; downloadable musical sound recordings; computer hardware and firmware; computer software; software downloadable from the Internet; amplifiers for hi-fi stereo equipment; amplifiers for microcomputers; keyboard amplifiers; woodwind instruments; percussion instruments; brass instruments; organs; pianos.

Class 15 Drums; drumkits; drumsticks; keyboards; synthesisers; digital pianos;

pianos; drum machines; groove boxes; woodwind instruments; percussion instruments; brass instruments; organs; pianos.

Class 25 Clothing; footwear; headgear.

Class 35 Retail services connected with the sale of apparatus for recording, transmission or reproduction of sound or images; audio and video recording and reproducing apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, amplifier tuners, amplifier valves, valve testers, power supplies, power attenuators, drum machines, drum monitors, cables, audiovisual equipment, radio receivers, audio interfaces, computer interfaces, controller keyboards, groove boxes, sound samplers, microphones, microphone stands, microphone booms, headphones, speakers, monitors, audio speakers, monitor speakers, sub woofers, signal processors, mixing desks, turntables, CD desks, magnetic data carriers, recording discs, recording media, downloadable sound recordings, downloadable musical sound recordings, computer hardware and firmware, computer software, software downloadable from the Internet, compact discs, digital music, amplifiers for hi-fi stereo equipment, amplifiers for microcomputers, keyboard amplifiers spectacles, sunglasses, drums drumkits, drumsticks, keyboards, synthesisers, digital pianos, pianos woodwind instruments, percussion instruments, brass instruments, organs and of parts and fittings for all of the aforementioned goods; business management; business administration; office functions; advertising; trade fairs; information, advisory and consultancy services relating to all of the aforementioned services.

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.

Lars Paalgard SOYLAND