Refusal of application for a European Union trade mark

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

Alicante, 05/07/2016

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB

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D-80538 München

ALEMANIA

Application No:	015117914
Your reference:	M/NNN-198-EM
Trade mark:	smartgreen
Mark type:	Figurative mark
Applicant:	HITACHI KOKI CO.,LTD 15-1, Konan 2-chome, Minato-ku Tokyo 108-6020 JAPÓN

The Office raised an objection on 23/02/2016 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.

The applicant submitted its observations on 20/04/2016, which may be summarised as follows:

• The Office has failed to provide a printout of the definitions of the terms ‘SMART’ and ‘ALONE’ [sic] as referred to in the initial examination report and the applicant is therefore unable to reconstruct the objection in detail in view of the lacking information material.

• The Office in incorrect in its assessment that the goods applied for are everyday consumption goods, as the machines and apparatus listed in Class 7 the majority of the goods listed in Class 9 are long lasting products, which are relatively expensive, and which will only be bought after careful examination.

• The Office in incorrect in its assessment that the goods at issue are mainly aimed at both average consumers and a professional public. Rather, the majority of the goods at issue are directed to professionals, and consequently, the degree of attentiveness of this public will be quite high.

• The subject mark ‘ ’ is a lexically unknown term which cannot be found in dictionaries. The mark is composed of words which have a number of diverging meanings. However, neither of the words ‘SMART’ or ‘GREEN’ have an obvious meaning in the context of the goods at issue, and when considered as a whole the combination will be understood as an unusual expression which is sufficiently vague in its meaning to be perceived as a fanciful trade mark in the context of the goods applied for.

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).

With regards the applicant’s arguments that the Office has failed to provide a printout of the dictionary definitions referred to in the initial examination report and that the applicant is therefore unable to reconstruct the objection in detail in view of the lacking information material. The Office considers that it sufficiently justified the objection raised. The Office provided dictionary references, together with a hyperlink to the relevant dictionary source, and examined the meaning of the mark in question in relation to the goods in question. As a result, the Office came to the conclusion that the expression ‘SMART GREEN’ consist exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but merely as a descriptor of a characteristic of goods being provided rather than an indication of trade origin.

The applicant has argued that The Office is incorrect in its assessment that the goods applied for are everyday consumption goods, aimed at both average consumers and a professional public. Rather, the majority of the goods at issue are long lasting products, which are relatively expensive, and are directed towards professionals. Consequently, the degree of attentiveness of this public will be quite high. The Office had noted the applicant’s submissions, but must advise that it remains of the opinion that these goods are, indeed, everyday consumer goods for which the relevant public is the average reasonably well informed and circumspect consumer. That finding cannot be undermined by the applicant’s claim that the goods applied for are purchased with some financial effort, as even more expensive goods can be general consumer goods.

In any event, it is apparent from the case-law that, despite a generally high level of awareness of a public composed of professionals, that level can be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (see judgment of 05/12/2002, T-130/01, 'REAL PEOPLE, REAL

SOLUTIONS', paragraph 24).

In its submissions the applicant has argued that the subject mark is a lexically unknown term which cannot be found in dictionaries. That the mark is composed of words which have a number of diverging meanings, but that neither have an obvious meaning in the context of the goods at issue, and that when considered as a whole the combination will be understood as an unusual expression which is sufficiently vague in its meaning to be perceived as a fanciful trade mark in the context of the goods applied for.

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 for which registration is being sought, and form an opinion of what it connotes.

The fact that the complete expression ‘SMART GREEN’ is not found in dictionaries does not alter the fact that, when taken as a whole, the meaning of the expression will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods for which registration is being sought, namely that, as indicated in the initial notification, they are products which incorporate smart technology and which are ecologically friendly. It is, therefore, the Office’s view that the expression ‘SMART GREEN’ is readily intelligible when taken in conjunction with the goods applied for, and viewed by the relevant consumer, who will see the expression ‘SMART GREEN’ merely as a descriptor of a characteristic of goods being provided rather than an indication of trade origin.

As regard to the applicant’s arguments regarding the various meanings of the various elements within the mark, the Office would advise that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

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 15 117 914 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.

Andrew CARTER